1 . Trademark
1.1. Sources of law
The principal source of law is the Intellectual Property Code (CPI), Book VII, with the latest amendment of the Plan d'Action pour la Croissance et la Transformation des Entreprises (PACTE Law) of 22 May 2019.
As a Member State of the European Union, France has transposed various European legal acts, notably:
- Directive (EU) 2015/2436 of 16 December 2015 replacing EC Directive no. 2008/95/EC.
- Regulation (EU) 2015/2424 of 16 December 2015 (amending EC Regulation no. 207/2009).
- EC Directive 2004/48/EC of 29 April 2004.
France is party to a number of International Treaties concerning trademarks:
- Paris Convention for the Protection of Industrial Property of 20 March 1883.
- Madrid Agreement of 14 April 1891 and Madrid Protocol of 27 June 1989 regarding the International Registration of Marks.
- Nice Agreement of 15 June 1957 concerning the International Classification of Goods and Services.
- Marrakech Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) of 15 April 1994.
The hierarchy of sources of law in France is as follows:
- French Constitution.
- International Treaties and European law.
- French laws.
- Regulatory acts.
Case law is not binding in France.
French law does not recognize use as a source of trademark rights, they are exclusively acquired through registration. Some defense mechanisms can be activated on the basis of non-registered well-known trademarks according to the Article 6bis of the Paris Union Convention.
1.2. Substantive law
Well-known registered trademarks benefit from a broader protection against goods and services not covered by the scope of the registration, if the use made by the third party, without due cause, takes unfair advantage of the distinctive character or the reputation of the mark, or is detrimental to it (Article L.713-3 CPI).
Famous non-registered trademarks corresponding to the criteria of Article 6bis of the Paris Convention are protected for goods and services, which are not similar to those for which the mark is known, in the same conditions as above.
To benefit from this broader protection, well-known/famous trademarks must be “known by a significant part of the relevant public for the products and services it designates”.
No specific protection is granted to the luxury industry trademarks but their “aura of luxury” can help to establish their reputation.
The well-known character of the trademark can be evidenced by “all means”, through a combination of objective elements showing that the trademark owns a power of attraction independent from the goods and services covered.
This evidence must show the intensity (commercial success), geographical scope and duration of use in commerce, notably through the market share occupied by the trademark, sales volumes, advertising/promotional investments, press articles, and so on (CJEU, General Motors 14 September 1999, CJCE, 14 sept. 1998, aff. C-375/97).
Consumer surveys can be used to show the degree of recognition of the mark amongst the public (in combination with other evidence). The methodology of the survey must be exposed, its results being submitted to the appreciation of the judges.
Oral testimonies, affidavits (if supported by factual evidence) or expert evidence can be used to support the claim. However, the “objective” types of evidence detailed above will be considered as more convincing to the judges.
A trademark can be enforced against a domain name, a trade name and other distinctive signs.
The trademark can be enforced only against uses made “in the course of trade” (CJEU Arsenal, 12 November 2002, no. C-206/01). The use of the trademark as a keyword or metatag is usually not considered as a use in the course of trade (CJEU, 23 March 2010, Google v. Louis Vuitton, C236/08 to C238-08). However, this use can be considered as infringing if it suggests a link between the trademark owner and the third party, or undermines the function of origin of the mark (Paris, pole 5, 1st ch., June 13, 2017, Merck: PIBD 2018, 1090, III, 204).
In case of well-known marks, such use can be sanctioned if likely to dilute or tarnish the prior famous mark (CJUE, 1re ch., 22 September 2011, aff. C-323/09, Interflora Inc. c/ Marks & Spencer plc).
A trademark can be enforced against its unauthorized use in social media in case of counterfeiting, denigration or parasitism, if the use is made in the course of trade. Particular attention must be brought to the potential “bad publicity” which could result in attacking social media users.
Use of a trademark is allowed in comparative advertising, provided that the comparison is “unbiased”. It can be sanctioned if this use takes unfair advantage of the reputation of the mark, discredits or denigrates it, creates a risk of confusion or if the goods or services are presented like an imitation or reproduction of the ones protected by the mark.
The use of a trademark in parody is lawful since it is considered as being outside the course of trade (unless this use is made to attract commercial gain by selling products, for instance).
The same set of facts cannot be used to take action claiming trademark infringement and unfair competition (Cass.com., 23 mars 2010, no. 09-66.522). Both grounds can be used in the same action if “distinct facts” constituting unfair practices or aggravating the infringement can be demonstrated.
Luxury brands must be aware of the bad publicity that can result from attacking certain types of infringements on new medias, mainly on social media.
2 . Copyright
2.1. Sources of law
The main national source of law is the Intellectual Property Code (CPI), Books I, II and III, incorporating the provisions of the laws of 1957 and 1985.
France has transposed some European directives with regard to copyright:
- Directive 93/98/EEC of 29 October 1993 for harmonizing the term of protection of copyright and certain related rights.
- Directive 2001/29/EC of 22 May 2001 on the harmonization of certain aspects of copyright and related rights in the information society.
France is also a contracting party to a number of International Treaties:
- Berne Convention of 9 September 1886 for the Protection of Literary and Artistic Works.
- Universal Copyright Convention of 6 September 1952.
- Rome Convention of 26 October 1961 for the Protection of Performers, Producers of Phonograms and Broadcasting Organizations.
- Marrakech Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) of 15 April 1994.
- WIPO Copyright Treaty of 20 December 1996.
The hierarchy of sources of law is as stated above in Trademarks, Section 1.1.
2.2. Substantive law
French copyright law protects “the rights of authors in all intellectual works, whatever their genre, form of expression, merit or destination” (Article L112-1 CPI), provided that they are formalized (and not mere ideas) and that they are sufficiently “original” (bearing the imprint of their author’s personality).
The CPI provides a non-exhaustive list of the works which can be copyrightable (Article L112-2 CPI), notably:
- “1 ° Books, brochures and other literary, artistic and scientific writings;
- 5 ° Musical compositions with or without words;
- 6 ° (…) Audiovisual works;
- 7 ° Works of drawing, painting, architecture, sculpture, engraving, lithography;
- 8 ° Graphic and typographical works;
- 9 ° Photographic works and those produced using techniques similar to photography;
- 10 ° Works of applied art;
- 14 ° Creations of seasonal clothing and adornment industries. Industries which, owing to the demands of fashion, frequently renew the form of their products, and in particular the making of clothing, fur, lingerie, embroidery, fashion, footwear, gloves, leather goods, the manufacture of high-novelty or special haute couture fabrics, the productions of dressmakers and shoemakers and upholstery factories.”
Objects of industrial, fashion or accessory design are copyrightable. As with other works of the mind, they must be “original”, which indeed excludes all works in which their creation has been dictated by purely functional purposes.
Copyright encompasses proprietary (economic) and moral rights.
Proprietary rights include the exclusive right to authorize or forbid the reproduction and representation (communication to the public) of the work.
Moral rights include the right of disclosure (exclusive right to disclose the work to the public and manage the conditions of disclosure, or to forbid it), the right of withdrawal or reconsideration (to amend the work or withdraw it after its first disclosure), the right of integrity (to prevent or control any alteration or modification of the work) and the right of paternity (to be identified as the author of the work).
The right of paternity is limited in the case of works of applied arts if the use of the sector or the object itself makes it difficult for the name of the author to be mentioned on the work (on the body of a car or a perfume bottle, for instance: CA Paris, 4e ch., 22 nov. 1983; CA Paris, pôle 5, 1re ch., 31 oct. 2012, no. 10/21777).
The author is the physical person who created the work. The person under whose name the work is disclosed is presumed to be the author (individual or legal entity).
Employment contracts do not operate a transfer of ownership of the author rights (even if a specific provision states the transfer), since the assignment of future works is prohibited in France. A specific assignment of the author rights must be established for a legal entity to acquire the author rights of any of its employees, consultants, shareholders, directors or suppliers.
As an exception, a legal entity publishing and disclosing a work can be the initial owner of the author rights in the case of a collective work created on its initiative, in which the personal contributions of the authors participating in its elaboration merge together so that it is impossible to grant them each a distinct right on the work as a whole (article L113-2 of the CPI).
The author rights are automatically transferred to the legal entity in some specific cases, as for contracts binding the producer to the authors of an audiovisual work, or commission contracts for advertising.
To be valid, copyright assignment must very precisely determine the object of the assignment, i.e. detailing each of the assigned rights and the scope of the use, limiting its extent and destination, its geographical scope and duration (L131-3 CPI).
Any global assignment of future works is prohibited.
The moral rights are inalienable and imprescriptible. They cannot be waived by the author.
Proprietary rights last for 70 years after the death of the author (starting on the 1 January following the author’s death). Collective works as well as anonymous works, or works disclosed under a pseudonym are protected for 70 years from the 1 of January following the disclosure of the work.
Moral rights are perpetual.
There is no copyright registration system in France. Works are protected from their creation, if they meet the conditions as explained above.
It is highly recommended to keep evidence of the date of creation of the work and of the paternity of the author.
Objects of industrial designs are capable of protection by copyright, provided that they are original and “bear the imprint of the personality of their author”.
Copyright infringement can be constituted by the “slavish” copy of the work or by a sufficient imitation. The assessment is made on the resemblances and not on the differences between the works.
Copyright be enforced against a trademark, a registered design/design patent, a patent a domain name a trade name, a pseudonym and other IP rights. With regards patent, in practice, a patent being purely functional, its object rarely collides with the object of protection of a copyright.
Copyright can be enforced against its unauthorized use in social media under the same conditions as in other media.
Comparative advertising does not apply to copyright by law.
The use of the artwork as a parody is one of the exceptions established by French law, based on the freedom of speech. The parody must be made with a humorous intention and should not create a risk of confusion with the work itself.
In terms of defences, the limitations are enumerated by law (article L.122-5 CPI), notably:
- Private and free performances performed exclusively in a family circle.
- Copies or reproductions made from a lawful source and strictly reserved for the private use of the copyist and not intended for collective use.
Provided that that the name of the author and the source are clearly indicated:
- Analyses and short quotes justified by the critical, controversial, educational, scientific or informational nature of the work in which they are incorporated.
- Press reviews.
- Reproductions, in whole or in part, of graphic or plastic works of art intended to appear in the catalog of a judicial sale.
- Representation or reproduction of extracts from works for the exclusive purposes of illustration in the context of teaching and research.
- Parody, pastiche and caricature.
- The reproduction or representation, in whole or in part, of a graphic, plastic or architectural work of art, by written, audiovisual or online press, for the exclusive purpose of immediate information and in direct relation to this last, subject to clearly indicating the name of the author.
The exceptions listed above shall not prejudice the normal exploitation of the work or cause unjustified prejudice to the legitimate interests of the author.
No “fair use” or “fair dealing” can be claimed outside these limitations.
The most common defence against an infringement claim is to challenge the originality of the copyright, the ownership of the author rights, or the existence of a confusing similarity.
An otherwise valid copyright can be deemed unenforceable if its owner has abused its right to act against the infringement (for instance the abuse of the right of disclosure by the heirs after the death of the author).
The prescription period is of five years “starting from the day on which the right owner knew or should have known the last fact enabling him to exercise the action” according to the new “PACTE” law of 2019.
For luxury brands looking to expand and protect their rights in copyright the utmost attention must be given to obtaining specific and lawful assignments from the authors when they are still in contract with the company in order to avoid future difficulties (in addition to employment contracts).
3 . Design
3.1. Sources of law
Designs are mainly governed by Book V of the Intellectual Property Code (CPI), notably transposing EC Directive 98/71/EC of 13 October 1998.
Regulation no. 6/2002 of 12 December 2001 applies to Community designs (CDR).
France is a contracting party to a number of International Treaties concerning designs:
- Paris Convention for the Protection of Industrial Property of 20 March 1883.
- Hague Agreement of 1925 concerning the International Registration of Industrial Designs (1960 and 1999 Acts).
- Locarno Agreement of 1968 amended in 1979, establishing an International Classification for Industrial Designs.
The hierarchy of sources of law is as stated above in Trademarks, Section 1.1.
3.2. Substantive law
According to article L. 511-1 CPI, to be protected as a design “the appearance of a product, or part of a product characterized by its lines, contours, colors, shape, texture or materials (…). These characteristics may be those of the product itself or of its ornamentation”. This comprises “any industrial or artisanal object, in particular parts designed to be assembled into a complex product, packaging, presentations, etc”.
A product protected as a design can be cumulatively protected by copyright in France if it also fulfils the conditions of this protection.
National designs must be registered at the French Industrial Property Office (INPI) and European designs can be either registered at the EUIPO or unregistered.
To be valid, a design must be new, meaning that no identical design has been made available to the public before its date of filing (for registered designs) or before its disclosure (for unregistered designs) and have an individual character, meaning that its overall impression must differ from the one produced by the prior designs.
Design protection excludes shapes which are purely functional.
Design rights are owned by their creator. If the design is disclosed or registered in the name of a legal entity, it will automatically be considered as the owner of the design rights (unless proved otherwise). According to article 14.3 of the CDR “where a design is developed by an employee in the execution of his duties or following the instructions given by his employer, the right to the Community design shall vest in the employer, unless otherwise agreed or specified under national law”. The French CPI does not address this point. Recent case law tends to apply article 14.3 of the CDR but it is not unanimous.
Design assignment is governed by contract law. To be valid it needs to be written and published on the register to be opposable to third parties.
If the object of the design is also protectable under copyright law, the rules of copyright assignment also apply.
Designs do not create moral rights (unless the object of the protection is also eligible for a protection under author rights). Designers still keep the right to have their name cited before the Office and in the register.
Registered designs are valid for five years from the date of filing and can be renewed for five years periods to a maximum of 25 years.
Unregistered design protection lasts 3 years from the date of disclosure within the territory of the European Union (not renewable).
The protection conferred by a design includes any design which does not produce a different overall impression on the informed user. The CDR mentions that “In assessing the scope of protection, the degree of freedom of the designer in developing his design shall be taken into consideration” (this notion does not appear in the French law).
Unregistered European designs give their owner the right to forbid the above acts, if the contested use results from a copy of the protected design.
A design can be enforced against a trademark, a registered design/design patent, a patent (although the scope of the protection should be different), a domain name, a trade name and other IP rights.
A design can be enforced against its unauthorized use in social media under the same conditions as on any other media.
Although French law does not specifically apply comparative advertising to designs, it should be allowed if the comparison is objective.
The notion of parody does not exist in design law, however, this exception is lawful for copyrights. Therefore, should the object of the right be protectable by copyright, it could be parodied. As for trademarks, the parody needs to be made outside of the course of trade.
The most common defence is to challenge the validity of the design (novelty and individual character / ownership of the rights) or the comparison of the designs to show that the secondary design produces a different overall impression.
The repair clause is included in article 8.2 of the CDR and L.511-8 CPI: “Community design shall not subsist in features of appearance of a product which must necessarily be reproduced in their exact form and dimensions in order to permit the product in which the design is incorporated or to which it is applied to be mechanically connected to or placed in, around or against another product so that either product may perform its function”.
A valid design could be unenforceable if it has been integrated in a third party trademark and its use has been tolerated for 5 years.
Abusive infringement actions are sanctioned through damages according to the law.
The time limit for bringing an infringement action is 5 years.
The right owner can claim design and copyright infringement in the same action.
The unfair competition claim must be based on a distinct set of facts (in which case both grounds can be claimed in an infringement and unfair competition action).
Fashion items are not always protectable as designs as they may be inspired from previous works and may not benefit from a sufficient individual character. Selecting the works to be filed as designs and ensuring that they can be enforced against third parties can be a challenging mission.
4 . Right of privacy, publicity and personal endorsement
4.1. Sources of law
The right of publicity, or more likely in France the right to one’s “image” is not specifically consecrated in positive law. It is derived from several dispositions, notably, as personality rights from article 9 of the Civil Code which states “Each individual has a right to the respect of his private life” (or article 226-1 of the Penal Code).
The “patrimonial” aspect of the image right is not consecrated by law but tends to be recognized by case law.
4.2. Substantive law
Individuals have the right to prevent unauthorized use of their name or image to sell products. No specific condition exists to benefit from this right.
It is not clear in France whether the right of publicity is transmissible mortis causa. However, French case law currently tends to admit that a “patrimonial” right is transmitted to the heirs.
An individual can assign his/her right of publicity in whole or in part and they can license their right of publicity. The licence can be exclusive or non-exclusive.
For the assignment/license of the right of publicity to be valid no specific rule applies, these contracts are submitted to the general contract law. The scope of the assignment/licence must be precisely defined (rights granted, geographical scope and duration), and a fair compensation granted.
The licensor can withdraw his consent unilaterally without justification. The licensee must be compensated for his loss.
Following the death of the licensor the contract is valid until its term and is transmitted to the heirs, unless specified otherwise in the contract.
Following the death of an assignor, contracts validly signed by the assignor before their death are transmitted to the heirs.
In the event the heirs have an independent right over the deceased individual’s name, image, likeness, or other unequivocal aspects of his/her identity, this point is not regulated by French law and the authors do not agree on it. It is therefore not clear if the image right is transmitted to the heirs of the deceased or not (and therefore the length or such rights is not fixed either).
Unauthorized use of a person’s name, image or likeness is reprehensible even if the use is not made commercially, as soon as the person can show that he/she has suffered a damage from that use, offering protection against alteration or denaturation of an individual's personality.
The compensation obtained depends on the commercial value of the individual’s image, which can be evidenced through any relevant document (and which will be higher if this person is famous than if it is an average individual).
Freedom of speech is the most common defence to justify the use made of a third person’s image (meaning that this use is informational and not purely commercial). The alleged infringer can also try to show that the person has not suffered any harm from the use made of his image or that its commercial value is extremely low, in an attempt to reduce the amount of the compensation.
Many uncertainties remain in France about the perimeter of the celebrities, the right of publicity and their transmission to the person’s heirs so luxury brands should take much care when dealing with this topic.
5 . Product placement
Product placement is permitted in France.
The Audio-Visual Council (CSA) limits the product placement to cinematographic works, audio-visual fictions and musical videos, not aimed at children.
Product placement is prohibited for some products: drinks with more than 1.2 degrees of alcohol, tobacco products, medicines, firearms and ammunitions, infant formulas. It is forbidden to promote the nutritional aspects of foods or drinks containing nutrients or substances whose excessive presence in the diet is not recommended.
The content of programs involving product placement must not prejudice the editorial responsibility and independence of the media service provider. The programs must not directly encourage the purchase of goods or services, in particular by making specific promotional references to these products or services, or unjustifiably highlight the product or service.
The audience must be informed of the product placement through a logo on the screen.
Product placement made through influencers on social media is not clearly framed by French law (as this practice is quite recent). As for “classical” product placement though, brands must make sure to inform the consumers when products have been offered to influencers for their promotion or when they have been paid to wear/present them to the public.
6 . Protection of corporate image and reputation
A legal entity can defend itself against denigration or defamation. For instance, a legal entity is entitled to claim compensation for the damage suffered when its reputation is damaged (Conseil d’Etat, March 26, 1980, no. 02206 05701), or when its brand image has been damaged (French Court of Cassation, commercial chamber, May 15, 2012, no.11-10.278).
A fault and prejudice must be proven since the compensation of this damage is based on article 1240 of the Civil Code.
Selective distribution agreements including specific clauses aimed at protecting the corporate image/reputation of one of the parties are common in the luxury area, for example prohibition to sell the products to re-sellers whose image is below a certain defined standard.
One cannot include in an agreement a clause prohibiting minimum prices imposed by the merchant to his resellers since this is contrary to The French Commercial Code. Clauses prohibiting purchase of non-original – but otherwise legitimate – spare parts and components are not legitimate either.
Liquidated damages or stipulated fines clauses for breach by a party of any provisions protecting the reputation or corporate image of the other party are permissible, but these clauses must not imbalance the rights and obligations of the parties and the judges can intervene to modify their contractual amounts.
Controlling the secondary market and preserving the quality of service/products through trusted resellers is a hard task for luxury brands. Tools must be put in place (and those available must be used) to work together with the secondary market platforms in order to help them identify the genuine/fake products and guarantee the quality to the consumers.