Trademark Infringement: What Are the Criminal Penalties in France?

Trademark infringement is a serious offence that can prove costly for both businesses and individuals. In France, protecting a trademark is essential to prevent fraudulent imitations, but what are the real risks in cases of infringement? What criminal penalties does the law provide, and how can one defend themselves or take legal action? This article explains everything you need to know about the legal consequences of trademark infringement, without complex jargon and with practical examples.

What is Trademark Infringement?

Before discussing penalties, it is important to understand what constitutes trademark infringement. Under French law, a trademark is a distinctive sign (name, logo, slogan, etc.) that identifies a company’s products or services. It is protected from the moment it is registered with the Institut National de la Propriété Industrielle (INPI).

Infringement involves reproducing, imitating, or using a protected trademark without the owner’s authorisation. This can take several forms:

• Selling products bearing an identical or similar trademark without permission.
• Using a logo or trademark name for similar products or services.
• Marketing counterfeit goods (clothing, accessories, medicines, etc.).

Practical Examples of Infringement

To better understand, here are some common examples:

• A trader sells handbags bearing the logo of a luxury brand without authorisation.
• A company uses a name very similar to a well-known trademark to mislead consumers.
• A website offers medicines under a registered trademark without permission.

In all these cases, infringement can cause significant harm to the trademark owner, whether in terms of reputation, market share, or financial losses.

Criminal Penalties for Trademark Infringement

In France, trademark infringement is a criminal offence under the Code de la propriété intellectuelle. The penalties aim to deter counterfeiters and protect trademark owners. Here is what an individual or company found guilty of infringement may face.

Main Penalties

The criminal penalties for trademark infringement can be severe. They include:

• Imprisonment: Infringement may result in a maximum prison sentence of 3 years. This penalty may be imposed on individuals (directors, employees, traders, etc.) involved in the offence.

• Fines: The fine may reach up to €300,000 for an individual. For a legal entity (such as a company), the fine may be multiplied by five, reaching up to €1.5 million. These amounts may be increased in cases of aggravating circumstances, such as organised crime or counterfeiting of dangerous products (medicines, automotive parts, etc.).

Additional Penalties

In addition to the main penalties, the court may impose supplementary sanctions, including:

• Confiscation of counterfeit goods: Counterfeit merchandise may be seized and destroyed.

• Temporary or permanent closure of the establishment: If the infringement occurred in a shop or business, the court may order its closure.

• Prohibition from engaging in commercial activity: The infringer may be barred from carrying out any professional activity related to the infringement.

• Publication of the judgment: The court may order that the court decision be published in newspapers or on websites at the expense of the convicted party. This measure aims to inform the public and deter potential counterfeiters.

Aggravating Circumstances

Certain situations may lead to harsher penalties. For example:

• Organised counterfeiting: If several individuals have collaborated to commit the offence, penalties may be more severe.

• Counterfeiting of dangerous products: If the counterfeit products pose a risk to consumer health or safety (medicines, toys, automotive parts, etc.), penalties are increased.

• Repeat offences: If the counterfeiter has previously been convicted of similar offences, penalties may be more severe.

How to Prove Trademark Infringement?

To initiate criminal proceedings, it is essential to prove the infringement. Here are the elements that may be used as evidence:

Material Evidence

• Counterfeit products: Items or packaging bearing the infringed trademark may be seized and presented in court.

• Invoices or order forms: These documents may prove the fraudulent origin of the products.

• Witness statements: Testimonies from customers, employees, or competitors may support the complaint.

• Screenshots or recordings: If the infringement occurs online (website, marketplace, social media), screenshots or recordings may serve as evidence.

Legal Evidence

• Trademark registration: The registration certificate issued by the INPI proves that the trademark is protected.

• Bailiff’s report: A bailiff may draw up a report to prove the infringement (purchase of counterfeit products, visit to a website, etc.).

• Expert reports: An expert may be appointed to analyse the products and confirm that they are counterfeit.

Legal Remedies for Victims of Infringement

If you are a victim of trademark infringement, several remedies are available to stop the offence and obtain compensation.

Filing a Complaint

The first step is to file a complaint with the police or gendarmerie. You may also lodge a complaint directly with the procureur de la République. This complaint will trigger an investigation that may lead to criminal proceedings.

Taking Legal Action

In parallel, you may bring legal action before the tribunal judiciaire. Two types of proceedings are possible:

• Criminal action: This aims to secure the conviction of the counterfeiter to criminal penalties (imprisonment, fines, etc.).

• Civil action: This allows you to obtain damages to compensate for the harm suffered (loss of turnover, damage to brand image, etc.).

Requesting Interim Measures

In urgent cases, you may ask the court to order interim measures to stop the infringement quickly. For example:

• Seizure of counterfeit goods: Merchandise may be seized even before the trial.

• Prohibition on sale: The court may order the immediate cessation of the sale of counterfeit products.

• Blocking of websites: If the infringement occurs online, the court may order the blocking of the website or the removal of fraudulent listings.

How to Defend Yourself Against an Infringement Accusation?

If you are accused of infringement, it is important to mount a strong defence to avoid unjust penalties. Here are some tips:

Check the Validity of the Trademark

First, verify whether the trademark in question is properly registered and protected. A trademark that is not registered or whose protection has expired cannot be the subject of an infringement action.

Challenge the Similarity

Infringement requires a similarity between the protected trademark and the sign used. If the products or services are very different, or if the sign used is not sufficiently close to the trademark, you may challenge the accusation.

Prove Lack of Fraudulent Intent

Infringement requires an intent to deceive the consumer. If you can prove that you were unaware the trademark was protected, or that you had no intention to cause harm, this may mitigate your liability.

Consult a Specialist Solicitor

An intellectual property solicitor can help you prepare your defence and challenge the evidence presented by the opposing party.

Frequently Asked Questions

What is the Difference Between Trademark Infringement and Unfair Competition?

Trademark infringement specifically involves the unauthorised use of a protected trademark, whereas unfair competition covers deceptive or abusive commercial practices, such as disparaging a competitor or imitating their products without using their trademark. The two may sometimes overlap, but the penalties and procedures differ.

Can You Be Convicted of Infringement Without Knowing?

Yes, ignorance of a trademark’s protection is not a defence under French law. Even if you were unaware that the trademark was protected, you may still be convicted of infringement. However, the absence of fraudulent intent may influence the severity of the penalties.

What Are the Time Limits for Taking Legal Action?

In criminal matters, the limitation period for infringement is 6 years from the date the offence was committed. In civil matters, the limitation period is 5 years from the day the trademark owner became aware of the facts.

Can You Appeal a Conviction for Infringement?

Yes, as with any court decision, it is possible to appeal a conviction for infringement. The appeal must be lodged within one month of the judgment being notified.

What Are the Risks for a Company That Unknowingly Sells Counterfeit Goods?

A company that unknowingly sells counterfeit goods may still be convicted, particularly if it failed to verify the origin of the products. Penalties may include fines, confiscation of goods, and reputational damage. It is therefore essential to ensure the legality of the products sold.