Copyright as a Means to Fight Against Counterfeiting

On February 24, 2014, French customs visited the offices of a company called “Parisac”. The customs seized nearly 4,000 counterfeit Chanel and Céline bags imported from China. Parisac and its manager, Mr. X., were prosecuted in the Criminal Court for counterfeiting and importing counterfeit goods. On May 4, 2015, the Criminal Court found them guilty.
Parisac and Mr. X. appealed to the Paris Court of Appeal. On 7 October 2016, the Court of Appeal upheld the first-instance decision. Judges fined Parisac and Mr. X., a fine of EUR 50,000, and condemned Mr. X. eight months’ suspended imprisonment. Moreover, Parisac and Mr. X. were sentenced to pay jointly to the Direction Nationale du Renseignement et des Enquêtes Douanières (National Directorate of the Intelligence and Customs Investigations) the sum of EUR 400,000 as a customs fine. Among other considerations, the court held that “the invoices of the Chinese supplier (…) cannot establish a regular origin“.
Parisac and Mr. X. made an appeal before the Cour de cassation (French Supreme Court). In sum, they dispute the ruling of the Court of Appeal which was built on copyright law. The Cour de Cassation essentially responds by referring to Directive 98/71 / EC of the European Parliament and of the Council of 13 October 1998 on the legal protection of designs. The court recalls:
[this directive] has intended to embody the principle of cumulation of protection under specific registered design protection law and under copyright law, whilst leaving Member States free to establish the extent of copyright protection and the conditions under which such protection is conferred” (Cass., Crim., 27 June 2018, No. 16-86478).
What the Cour de Cassation tells us is that the fight against counterfeiting has a panoply of weapons. In the presence of a valid registered intellectual property right, it is possible to pursue on the ground of the registered trademark or design. Failing that, or in case of a weak registered intellectual property right, copyright may be an effective alternative.

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