In March 2009 Milco was granted permission, further to an order made by the first presiding judge of the Poitiers Court of Appeal, to confiscate works at the premises of Jeca for infringement of its MOUSSERELLE and  MOUSSERELLE AUX TROIS SAVEURS trade marks even though a court action based on these same facts was pending before that court. The order was then retracted on the ground that, if Article L. 716-7 of the French Intellectual Property Code grants the presiding judge of the court of first instance the exclusive power to authorise the trade mark holder to have infringing works confiscated, an application for the confiscation relating to an ongoing action must be presented to the presiding judge of the division in which the case is being heard under the provisions of Article 812(3) of the French Civil Procedure Code.

The Court of Cassation ruled that the March 2009 order should not have been made. Article 812(3) of the Civil Procedure Code only applies to cases pending at first instance.  In the case of cases pending before the appeal courts, only the first presiding judge has the power to order, pursuant to an application, the confiscation of the infringing goods. Thus a distinction needs to be made between an order for the confiscation of infringing goods made at first instance (French Civil Procedure Code) and before the Court of Appeal (French Intellectual Property Code).

Source: lIPsTIC, the newsletter of Granrut Avocats, Paris, France