France: Inform, don’t threaten, alleged indirect infringers!
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France: Inform, don’t threaten, alleged indirect infringers!

According to Article L615-1 paragraph 3 of the French IP Code, the offering for sale or putting on the market of an infringing product, where such acts are committed by a person other than the manufacturer of the infringing product (so-called indirect infringement), only imply the liability of the person committing these acts if they were committed knowingly.

To inform such a person, according to Article L615-1, it is customary to send an information letter (so called Lettre de mise en connaissance de cause).

In a published decision rendered on May 27 2015, the French Cour de cassation has given some indications about the content of such a letter.

In 2007 and 2009, a patentee warned a company it was infringing some of his patents. The company objected to the alleged infringement and discussions were held to solve the dispute at hand. In 2012, while discussions were continuing between the company and the patentee, the patentee sent several letters to some of the company's customers warning them that the commercialisation of some of their products might require a licence referring to eight existing patents the patentee owned.

In these letters, referring to Article L615-1, the patentee demanded the customers to cease the distribution of the products referring to these patents or to directly contract a licence if they could not obtain licence certificates from their suppliers.

In response, the company initiated an action against the patentee in order to put an end to the sending of such letters. The Cour d'Appel ruled in favour of the company. According to the Court, the sending of the warning letters was characteristic of a manifestly unlawful disturbance as well as an act of unfair competition.

The Cour de cassation confirmed this ruling, pointing out that:

  • the letters should not have been drafted in a threatening way;

  • they should have been more specific on how the infringement was characterised by the distribution of the products;

  • they should also have mentioned that there were discussions between the patentee and the company; and

  • they should not have been focusing on the set-up of a licensing programme.

The Cour de cassation concluded that such letters went beyond what was intended as an information letter in Article L-615-1.

Navy
Kohn_Philippe-100

Jérôme Navy

Philippe Kohn


Gevers & Ores41, avenue de FriedlandParis 75008, FranceTel: +33 1 45 00 48 48Fax: +33 1 40 67 95 67paris@gevers.euwww.gevers.eu

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