This article is written by Pankhuri Bhatnagar, pursuing a Certificate Course in Intellectual Property Law and Prosecution from LawSikho.
Intellectual Property (IP) refers to a type of Property which is “Intellectual” or intangible in nature, i.e., creations of the human mind. This includes every creation ranging from a piece of poetry to the packaging design of a product or the interface of a website. The concept of “rights of an author” in French Jurisprudence can be traced back to the 16th century, where the King used to grant royal privileges to editors, through which they were able to protect their works for a period of 3-10 years before it entered the public domain. By the 17th century, authors of works had started receiving a percentage of remuneration for their work. Today, the law relating to Intellectual Property in France has been codified in the Intellectual Property Code of 1992, which has replaced all earlier legislations relating to the subject matter.
With the increase in digitisation and globalization, it is important to be aware of the IP laws of other major jurisdictions. Such information may come in handy if you are planning to expand your business to France (trademark and industrial design), or want to upload your poetry or paintings on a French website (copyright) or have an invention which you want to get patented in France (patent) or in any other innumerable circumstances.
This article aims to give a brief overview of the Intellectual Property laws prevailing in the French jurisdiction, the process of registration, duration and type of IP rights granted and the penalties imposed for their infringement. It also touches upon the International agreements the country is a party to and its impact on national laws of the country.
The French law divides Intellectual Property into 2 broad categories:
- Literary & artistic property – This includes copyright, neighbouring rights and database rights.
- Industrial property – This includes trademark, industrial designs and patents.
What is Copyrightable?
Under the French Copyright law, all original ‘works of the mind’ are protected regardless of their purpose, form or expression. No registration is necessary and the author shall enjoy an exclusive incorporeal right of property against all others by the mere act of creating the work. One intriguing feature is that the title of the creation is protected just like the work itself! This means that no one can make use of the title even if the work is no longer granted protection, as the use of same titles for the same kind of work can create confusion in the minds of the public. Article L112-2 gives an inclusive, non-exhaustive list of all works which can be granted copyright protection under the Code. Apart from the literary, dramatic, artistic, musical and other works which are usually granted Copyright protection in most jurisdictions, there are a few notable additions specified in the Code:
- Geographical maps;
- 3-D works of topography and geography;
- Scientific writings;
- Software and its design material;
- Audio visual works which includes a series of moving pictures, with or without sound;
- Creations of seasonal industries: This includes footwear and fashion articles manufactured, fabrics manufactured for upholstery, fabrics which are specially used in high fashion dresses or have ‘striking novelty’ and Industries which make fur, dresses, leather goods etc and renew the design of their products quite frequently.
In the case of Roberts A. D. et al. v Chanel et al., the French Court held that fashion shows are a form of choreographic work and are capable of being protected by copyright. Clicking of pictures and recording videos of the fashion show would amount to an act of infringement under the Code. Similarly, in another case of Shelley v Rex Features, it was held that outfits which are highly artistic can be protected as a work of ‘artistic craftsmanship’. Reputed fashion houses can choose to get the designs registered so as to exercise monopoly rights with respect to the outfit designs.
Certain exceptions have been made in the interest of fair use such as private family performances, personal use, review of work, parodies and caricatures. These exceptions are listed in Art. L122-5 of the Code but are quite limited in nature as compared to laws of other jurisdictions.
Duration of Copyright
In general, the author has the exclusive right to exploit his work during his lifetime and proprietary rights subsist for 70 years after his death (Art. L123-1). The right can be further extended by 30 years if the author died on active service for France, i.e., for a total period of 100 years after the author’s death (Art. L123-10). For the ease of calculation, the author of work is deemed to have died on 31st December of the year of his death.
- For works of collaboration – the 70 year period is calculated from the date of death of the last surviving collaborator (Art. L123-2).
- For anonymous, pseudonymous and collective works – 70 years from the date of publication of the work (Art. L123-3).
- For performances, phonogram, video gram or audio-visual works – The term shall be 50 years from date of the performance / fixation of sound / fixation of images / communication to the public respectively (L211-4).
- For posthumous works – 25 years Copyright from the date of publication (L123-4).
Rights granted by Copyright
In France, Copyright involves both patrimonial and moral rights.
Patrimonial rights refer to the exclusive economic rights given to the author of the work and on his death, to the author’s spouse or heirs. They enable the owner to permit, control or prohibit the exploitation of his work, such as reproduction, communication to the public, distribution, adaptation, translation etc. The author is the first owner of the work except in cases where the work was performed under a contract of employment /services for someone else. Economic rights can transfer from one person to another. (Art. L111-1)
Moral rights enable the author to enjoy respect for his name and work. He alone has the right to determine whether his work should be published, the method of disclosure and modifications to be made. He can also reconsider or withdraw his work after sending it for publication and can insist that his name is credited or conversely, that his name remains hidden behind a pseudonym or an anonymous work. The right is perpetual, inalienable (cannot be transferred to someone else) and imprescriptible (cannot be taken away by prescription or lost due to lapse of time). (Art. L121-1 to -9)
Punishment for Copyright Infringement
Contrary to the stand taken by most common law countries, France considers breach of proprietary rights a criminal offence. As soon as the offence has been established, police officials can seize the infringing articles and Courts can order total or partial closure of the establishment involved in the commission of the offence. The penalty for Copyright infringement is 300,000 Euros and 3 year imprisonment. In cases where the infringing act was done as part of an organized group, the fine can go up to 500,000 Euros and a 5 year imprisonment term.
What is patentable?
In order for an invention to be granted patent protection, it must meet the requirements given in Article L.611-10 of the Code, namely:
- Inventive step;
- Industrial utility;
- Must not fall in the non-patentable subject matter.
Types of patent protection
On 1st July 2020, France introduced the system of filing provisional patent applications (see here). This system comes in handy when there is very little time to draft the complete patent specification but there is a need to disclose the invention (for example – if the invention has to be published in a journal or presented at a fair). There is a period of 12 months within which the application must be converted into a ‘classic’ or complete application, failing which it will be abandoned.
Inventions can also be granted protection under a Utility Certificate. This system calls for the same eligibility criteria as that of a patent, the only difference is that they can be granted without conducting a search and consequently, no search fee has to be paid. The term of protection is half of that of a patent.
Supplementary protection certificates can also be given to a patent owner in case of regulated goods such as medicines, process of obtaining / products necessary for making a medicine, etc. It can only be granted to inventions which are already protected by a ‘basic patent’ and where it is applied for within 6 months of market authorisation. The purpose of a supplementary protection certificate is to enable the patent owners to maintain monopoly prices and to compensate for the time lost until market authorization was given, thus, it plays the role of extending the patent duration.
Duration of a patent
- Patents – Protection is given for 20 years after the filing date, provided that annual payments are made.
- Utility certificates – 10 year duration. It can be converted into a 20 year patent if an application is made within 18 months from the priority date and before its publication.
- Supplementary protection certificate – It enables extension of the patent duration by 5 years after expiry of the patent or 15 years after the Market authorization was made, whichever is shorter.
How to register a patent?
The application for a patent registration can be made by the inventor himself, his authorized agent or by his place of employment in cases where the employer owns the invention. There are 3 avenues where an application can be made:
- For French patent – French Intellectual Property Office (INPI)
- For Europe patent – European Patent Office (EPO)
- For International applications – World Intellectual Property Organization (WIPO)
The procedure for filing and the documents required are given on the official websites of these offices. There is also an exception that inventions which have the potential to be of use in national defence have to be filed in France first. The office then decides whether the invention must be kept secret or if it can be filed in other jurisdictions.
Rights granted by a patent
After registration, the owner acquires an exclusive right of exploitation. He shall control the manufacture, use, offering and putting on the market of the product or process of which he is the owner.
Punishment for Patent Infringement
The penalty for infringing any of the rights of a patent owner is 300,00 Euros fine and 3 years imprisonment. Where the product is dangerous to the health & safety of animal life or humans, or the infringing act was done by an organized criminal group or a digital communication network, the fine goes up to 750,000 Euros with a 7 year sentence (Article L615-14).
Which trademarks can be registered?
Under the French law, any sign which can distinguish the goods & services of one from another and can be represented graphically can be registered as a service mark or trademark. The law does not confer any rights on the owner of an unregistered trademark, with the exception of well-known marks, which may be protected in pursuance of Article 6 bis of the Paris Convention, 1883. There are 2 conditions necessary for claiming this protection:
- The mark must be adjudged as a well-known mark by the courts (based on whether it is recognized by a significant proportion of the public, scope of advertisements, seniority of the mark and its usage).
- There must have been an unauthorized use of the mark which is likely to damage the reputation or ride on the goodwill of that mark.
The mark can constitute:
- Audible signs – any distinctive sound or musical phrase.
- Denominations of every kind – words, numbers, abbreviations, surnames, geographical names, combination of different words etc.
- Figurative signs – shape, combination of colours, labels, holograms etc. (Art L711-1).
Requirements for registration of a trademark (Art L711-2 to 4)
- Distinctive – The sign must not be generic or indicative of the quality, purpose, shape, function etc. of the goods or services to which it is proposed to be applied.
- Must not infringe prior rights – It should not be similar to an already registered or a well-known mark, must not affect the personality rights of a person (by using his surname or pseudonym) and must not infringe a protected industrial design or appellate of origin.
- Lawful – The sign must not be contrary to morality or public policy. The use of the sign should not be prohibited by law.
- Deceptiveness – The mark must not be capable of misleading the public as to the quality, nature or origin of the products and services. It must not contain geographical indications for products which do not actually originate from that location, especially in the case of spirits and wines.
- Must not be excluded – There are certain signs which are prohibited from use under Article 6 of the Paris Convention, 1883. This includes state emblems, symbols of Red cross, flags and other official signs.
How to register a trademark?
The application for trademark registration can be filed before:
- For French trademark – French Intellectual Property Office (INPI)
- For European trademarks – European Union Intellectual Property Office (EUIPO)
- For International applications – World Intellectual Property Organization (WIPO)
The Application must include the following information:
- Details of the Applicant;
- Sample of the trademark proposed to be registered;
- Proof that the filing fee has been paid;
- The goods & services it is to apply to, according to the NICE classification.
Once the application has been filed, the INPI conducts an examination of the same and checks whether:
- The documents and details specified in the application are in accordance with law.
- The sign is capable of registration as a mark.
The system is based on the principle of “1 application for 1 mark”. Once the above grounds have been verified, the office can either grant the registration, refuse it by listing objections or call for amendments in the application. The Applicant is given a certain period of time to respond to the objections or to make the changes, after which a final refusal of registration is issued by the office.
In case of acceptance, the mark is published in the Trademark Gazette within 6 weeks from the date of filing the application. A 2 months period is allowed for opposition by owners of priority rights after which the mark will be successfully registered.
Rights of the Trademark owner
Once the mark is registered, the owner shall have the exclusive right to use it on the products and services for which it is designated. He can prevent others from using, affixing or reproducing the mark, even if it is done after adjoining words like “imitation, manner, type”. In cases where there may arise a likelihood of confusion in the minds of the public, the owner can prevent the use or registration of deceptively similar marks for the goods and services identical or similar to those for which his mark is registered. (Art L713-1 to 3)
Duration and Renewal
The period of protection for Trademarks in France is 10 years. The mark can be renewed indefinitely without any need to show proof of use. It must be noted that during renewal, the owner cannot modify the mark or expand the goods and services to which the sign applies. The specifications remain the same as they were in the original registration.
The application for renewal of the mark has to be made to the INPI in the 6 months before the mark is to expire. An additional period of 6 months is also available for filing the renewal, but an additional fee will have to be paid in that case. Renewal fees must be paid, failing which the mark would be forfeited. However, there is a provision for appealing against the forfeiture and a grace period may also be allowed to the Applicant for submitting the fees. The renewal comes into effect the very next day after the date of expiry of the mark.
Unlike Copyright and Patents, infringement of a trademark is punishable as a civil offense under French law. “Infringing” actions that were taken before the publication of the trademark application are not considered as infringement for the purpose of prosecution and only actions taken after publication can be prosecuted.
The jurisdiction of the French Courts extends to cases of online infringement. Law 2004-575 which gives effect to the EU Directive (2000/31) recognizes the liability of Website editors, Internet service providers and hosting providers. While they do not have any general obligation to check for unauthorized use of trademarks, they can be held liable if they were aware of the infringing action, or failed to take action on becoming aware.
In a landmark case, the French Supreme Court elaborated on the “substantial link” theory regarding infringement of trademark rights by foreign websites. The theory claims that mere accessibility of the website from France is inadequate to impose liability and it must be proved that the site was intended for French citizens. This is determined based on the language used by the website, the currencies in which the goods and services are available and the units of measurement used.
Any person involved in import, export, transactions, selling or reproduction etc., of goods and services under a registered trademark without authorization from the owner shall be punished. The punishment can be either 300,000 Euros and a 3 year imprisonment term or 400,000 Euros accompanied with a 4 year term, depending on the circumstances of the case, as outlined in Art. L.716-9 and L.716-10 of the Code.
Brands often come up with new shapes, colours, materials and packaging for their goods and services. This is done to make their products visually appealing and to offer more variety to the consumers. In order to protect these innovative designs from being copied without permission, brands can get their ‘Industrial Designs’ registered. Art L511-1 to 8 of the French IPC lays down the conditions for such registration.
Requirements for registration
- Novelty – The design must be new, i.e., an identical design must not have been disclosed before the priority date or on the date of filing an application for registration. Two designs are said to be identical if they only differ in immaterial aspects of the model.
- Individual character – The test for determining individuality is whether the design creates an overall visual impression on the viewer which is different from that created by other prior designs.
- It must not be contrary to public policy or morals.
- The design must not be solely dictated by the mechanical function or purpose of that product.
How to register the design?
Any natural or legal person who owns the design, or his/her agent can file an application for registration online. The application can be filed before:
- French Intellectual Property Office (INPI) – When the Applicant resides or has a registered office in France.
- European Union Intellectual Property Office (EUIPO) – When the Applicant resides or has his place of business in any state of the European Community.
- World Intellectual Property Organization (WIPO) – for international registration of designs.
- Reciprocity – In cases where the Applicant neither resides nor conducts business in any state of the European community, protection can still be granted to him provided that his country also gives reciprocal protection to French designs.
Application for registration
The Application must contain the identification details of the Applicant and must be accompanied with drawings or photographs depicting the model or design of the product. There must be sufficient reproductions of the design to be registered so that the design can be perceived accurately. France is also a signatory to the Locarno Agreement, which is a multilateral treaty administered by WIPO and lays down a method for classification of designs. All applications must specify the number and class of goods to which the industrial design applies, according to the Locarno classification system. The application is then examined by the office. If no grounds for rejection are found, the design is granted protection and is published by the office.
Rights granted to Design owner and its exceptions
The owner of the design acquires the exclusive right to manufacture, offer, use, import, export and possess the goods comprising the registered design. No other person can undertake these actions without the permission of the owner. (Art L513-4).
However, there are quite a number of exceptions to this exclusive right:
- The restriction does not apply to private or non-commercial acts, which means that the design can be reproduced as long as it is not done for commercial purposes.
- Reproduction for the purpose of experiments is also allowed.
- Acts done in pursuance of teaching are permitted, as long as the owner is credited and the act constitutes a fair business practice.
- The rights do not apply to equipment on foreign airplanes and ships which temporarily enter France, or to spare parts imported for the purpose of repairing the foreign ships and airplanes.
- There is no infringement when the owner has consented to the display of goods in the European community markets.
Duration of protection
Initially, the design is protected for a period of 5 years from the date of filing. The duration can be extended after every 5 years up to a maximum period of 25 years. Unregistered community designs are usually given a 3 year protection from the date of disclosure. Apart from this, both registered and unregistered designs can also be protected under the Copyright law as a piece of artwork if all the requirements under that law are fulfilled.
Punishment for Infringement of design
Article L521-4 of the Code talks about the penalties for infringement of any of the rights of the design owner. A person who knowingly commits infringement is punished with a 300,000 Euros fine and 3 year imprisonment term. Where the infringing act is done by an organized crime group, the fine goes up to 500,000 Euros and a 5 year term. French courts also have the power to order temporary or permanent closure of the place where the offence was committed.
Compliance with International and Regional agreements
France is a party to a large number of International and multilateral agreements relating to Intellectual Property. It is a member of WIPO and the TRIPS agreement, which is the most comprehensive multilateral agreement relating to IPR. It is also a signatory to the Paris Convention for protection of Industrial Property, 1883. Other important agreements the country has signed are:
- Patent Cooperation Treaty (PCT), 1970 – this allows the filing of International patent applications.
- Munich Convention on the Grant of European Patents, 1973 – It enables the patents filed with the European patent office to be enforceable in France.
- Unified Patent Court – It is a law which aims to provide enhanced cooperation between 25 states of the European community which is currently being ratified by the member states.
- Trademark Law Treaty
- Madrid agreement on International registration of marks, 1891 – provides for International filing of trademark applications.
- Madrid Protocol, 1989 – governs the implementation of the agreement.
- Berne Convention for the Protection of Literary and Artistic Works, 1886.
- Convention for the Protection of Producers of Phonograms against Unauthorized Duplication of Their Phonograms.
- Rome Convention on Protection of Performers, Producers of Phonograms & Broadcasting Organizations.
- WIPO Copyright Treaty.
- WIPO Performances and Phonograms Treaty.
France has a robust IP mechanism contained in the Intellectual Property Code of 1992. The law relating to protection and enforcement of intellectual property is quite detailed and well structured, comprising 52 sections divided into 5 parts.
France is also a signatory to a large number of IP based agreements and the National law is substantially influenced by the International treaties and the Regional agreements it is a party to. The Code lays down detailed provisions regarding the qualifying criteria, registration, enforcement and infringement of Intellectual Property rights. Major portions of the Code are devoted to Copyright, Patents, Trademark and Industrial designs. Apart from these four domains, the law also touches upon neighbouring rights, database rights, trade secrets, plant varieties, geographical indications and various types of patents such as provisional patents, utility certificates and supplementary protection certificates. The country has a well-defined filing procedure for national, European and International applications across all IP domains which has made it an entrepreneurial hub for people across the world. The ease of registering and getting protection for new inventions and works has transformed it into a powerhouse for conduction of trade and commerce and ownership of Intellectual Property Rights.
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