Preserve evidence in IP infringement: Settlement DE and FR

The comparison of German and French law on the preservation of evidence in IP infringement shows that the procedures are similar, but differ in implementation. In France, the Saisie-contrefaçon allows far-reaching seizure.

In the case of suspected infringements against patent, trademark or design rights, the owner of the intellectual property rights has access to proceedings both in German IP property rights and in international IP law. The comparison of German and French law with regard to the preservation of evidence shows that the procedures are similar – as it should be according to European harmonisation – but differ in their implementation.

Procedures for the preservation of evidence in DE and FR

Under German law, owners of patent and trademark rights can rely on proceedings for the preservation of evidence under, inter alia, § 140 c PatG for patent infringements and § 19 MarkenG for trademarks, as well as on the so-called inspection procedure under § 101a UrhG for copyright infringements.
German law also provides for information claims in the case of suspected patent, trademark or design infringements which can be asserted by means of an injunction.

Saisie-contrefaçon: French procedure for the preservation of evidence

The French procedure for the preservation of evidence, the so-called “Saisie-contrefaçon”, has comparatively low requirements compared to German law. With the “saisie-contrefaçon”, goods and means of production of a suspected infringer can be directly accessed and with the intervention of a bailiff and evidence can be seized.

The saisie-contrefaçon must first be authorised by the French tribunal de grande instance (civil court), namely by the civil court that is competent for patent matters in the territory concerned. If the request for the preservation of evidence is successful, a bailiff is appointed to carry out the investigation – and this is done without notifying the IP infringer (ex parte). A surprise effect is guaranteed.

In France, this saisie-contrefaçon is widely used to obtain information, preferably also in international patent proceedings. The owner of an IP right can instruct the bailiff to secure evidence at any possible location on the basis of an interim injunction.

In contrast to German law, it is not only possible to inspect documents or products, but the French bailiff is also entitled to confiscate such goods, samples or specimens and leave them to the right holder to produce evidence. It is therefore a very far-reaching seizure.

Saisie-contrefaçon for holders of FR or EU intellectual property rights

The Saisie-contrefaçon can only be used by the holders of French or EU intellectual property rights. In order to conduct the procedure, an application must be submitted to the appropriate French courts, the Tribunaux de grande instance pursuant to Article 716-3 of the Code de la propriété intellectuelle (CPI).
It should be noted that this is also possible in ongoing proceedings. As in German law, the right holder in France must also provide serious evidence of an infringement. In Germany, it must also be proven that the preservation of evidence is necessary in order to be able to assert claims for information, injunctive relief and damages. Such evidence is not required in France. The saisie-contrefaçon explicitly and avowedly serves to secure evidence.

Opposition to seizure

If one does not agree with such a seizure, one can lodge an objection against it according to both German and French law. In Germany, opposition can be lodged before the appeal court. In France, the proceedings would be continued as preliminary injunction proceedings with an opposition before the Tribunal de grande instance.

Tight time limits for the saisie-contrefaçon

In addition, the Saisie-contrefaçon in France is also subject to strict deadlines. Once the saisie-contrefaçon has been implemented, the right holder must bring an action on the merits within 20 working days or 31 calendar days, otherwise the saisie-contrefaçon will be declared null and void at the request of the defendant. In such a case, the defendant may also claim damages from the claimant. The date of transmission of the statement of claim by the judicial officer responsible for service shall be decisive for the calculation of the time limit.

In Germany, on the other hand, a time limit for bringing an action is set only at the request of the defendant.

Conclusion

Despite European harmonization in patent and trademark law, despite numerous EU directives which also harmonize national legislation for IP rights, there are still differences in the actual implementation in the individual EU member states.
It should therefore always be considered whether a European trademark or patent protection ensures the desired protection status, even if an national IP protection in Europe initially appears sufficient. As soon as your product is marketed in several countries, the IP rights there are valid.