French damages: a frank response

Last Tuesday, in "Damages in France: is there a sign of an upward trend?" (here), I ventured to suggest that a recent French damages award in a trade mark dispute indicated that the French courts were becoming more generous in their awards.

Not so, says my good friend Richard Milchior (Granrut), who assures me that French infringement damages have already been generous for some time, even before the coming into force of the EU's IP Enforcement Directive. Richard has even helpfully pointed me towards this useful table compiled by the PIBD, with some details of actual awards -- so you can believe him!  As Richard says:

"As I told you, more or less the international community thinks that the French court are not awarding damages ( obviously there is an assimilation between damages and big amounts);
The truth is:
(1) this is wrong
(2) if bigger damages are not awarded it is often due to the fact the plaintiff refuses to provide information which is (rightly or wrongly considered as business secrets) to the court, they do not understand that it is needed , they are to lazy to do the necessary work or their lawyer and /or trade mark agent does not do what it needs to do. ...

Be aware that often in France the amount awarded for unfair competition or parasitism could cover damages to well known marks since we had the habit of using tort law for this even before the CTM Regulation and the trade mark directive".

Thanks, Richard, for taking the effort to let us know.

Damages in France: is there a sign of an upward trend?

SNCF: from chemin de fer
to information highway

Last October Tribunal de Grande Instance de Paris ruled in favour of French national railway operator Société nationale des chemins de fer français (SNCF) in a dispute concerning the registration of a domain name which infringed the company's SNCF trade mark. Opting to sue for trade mark infringement rather than merely go for a domain name transfer via a cheap-and-cheerful domain name arbitration, SNCF hit the jackpot.  The court not only ordered the transfer of the domain name but ordered the infringer to pay the following sums:

* €10,000 for trade mark infringement;
* €5,000 for violation of the SNCF's rights in the domain name sncf-usa.com and
* €5,000 for perpetrating a misleading commercial practice.
* Costs of €5,000.

The authors of the source from which this note is taken add:

"In terms of brand protection strategy, there is little doubt that the prospect of court action is a more powerful deterrent than a UDRP decision. The defendant in the present case is now in the position of having to find €25,000, a significant sum which will certainly make him and others think twice about such behaviour".

Even apart from the deterrent factor, it seems to this blogger that, on the whole, damages in French trade mark infringement proceedings have in the past tended to be fairly low.  While €25,000 is not exactly a king's ransom, it strikes him as indicating that, possibly since the coming into force of the EU's IP Enforcement Directive, French damages awards may have become a little more generous.  IP Finance would be happy to hear from French readers as to whether this impression is correct.

Source: "Court decision sends strong warning to cybersquatters", written for World Trademark Review by David Taylor and Vincent Denoyelle (Hogan Lovells, Paris).