Validity of seizure upheld by Supreme Court

In Marchesini v SA Brasserie de Tahiti (Cass Com, February 20 2007, published in June 2007), the Supreme Court declared that a seizure carried out at the request of a trademark owner was valid.

Seizures carried out to determine whether trademark rights have been infringed are governed by Article L716-7 of the Intellectual Property Code. Article L716-7 reads as follows:

"If the plaintiff fails to institute legal proceedings, either civil or criminal, within a period of 15 days, the seizure shall be automatically null and void, without prejudice to any damages that may be claimed."

Pursuant to Article L716-7, the writ of summons must be served within 15 days of the seizure. This time limit follows the ordinary rules of computation under Articles 641 and 642 of the Code of Civil Procedure: the period starts to run on the day following the seizure and expires after 15 days at midnight.

The case of Marchesini v SA Brasserie de Tahiti involved the alleged infringement of the trademark HINANO TAHITI. In its decision the Supreme Court declared that a seizure was valid despite the fact that, within the 15-day period, the plaintiff had filed a civil liability action under Article L713-5 of the Intellectual Property Code, and not an action for infringement of trademark rights under Article L716-1.

The court pointed out that Article L716-7 of the code does not prevent a trademark owner from filing a civil liability action under Article L713-5 after requesting a seizure to determine whether its rights have been infringed.

In an earlier separate ruling (February 14 2007) dealing with similar issues, the Strasbourg Court of First Instance had found that seizures made at the request of Puma AG and Puma France companies were null and void, as the plaintiffs had failed to institute legal proceedings within a period of 15 days. In that case the main issue concerned the computation of the time limit under Article L716-7 where the seizure takes place over several days.

By virtue of an order issued by the president of the Court of First Instance, Puma AG and Puma France had directed a bailiff to proceed with a seizure at the premises of an Auchan hypermarket. The seizure started on August 2 2003 and finished on August 5 2003. Puma AG and Puma France served a writ of summons on the defendants on August 19 2003.

The court declared that the seizure was null and void, stressing that:

"Seizure operations which take place over several days are considered as one single seizure. It follows from this that the time limit must be calculated based on the first day of the seizure."

Therefore (even if it was not mentioned in the ruling), under Articles 641 and 642 of the Code of Civil Procedure the time limit started to run on the day following the first seizure (ie, August 3 2003).

This decision goes against the doctrine, which considers that when a seizure takes place over several days, the time limit starts running on the last day of the seizure - that is, the day on which the bailiff submits his or her report to the distrainee (See Section 14.40, "Saisie-contrefaçon", Pierre Véron, Dalloz Référence, second edition). However, this principle is limited, as bailiffs are not obliged to submit their report immediately at the end of the seizure (in the case at hand the report was submitted on August 7 2003, two days after the end of the seizure). Therefore, if the court were to take into account only the date of the bailiff's report, plaintiffs would be able to extend artificially the 15-day period by asking the bailiff to delay the submission of the report. Therefore, the Strasbourg First Instance Court decision seems to follow the spirit of Article L716-7, especially as the bailiff had effectively seized goods on the first day of the seizure and the fears of the plaintiffs as to the infringement of their rights had been confirmed.

The court then examined the consequences of its finding of nullity. The court pointed out that:

"in accordance with longstanding case law, the nullity of the seizure for failure to institute legal proceedings within a period of 15 days is limited to the effective seizure of the goods and not to the description of the products at stake, which can still be used as evidence."

Therefore, the court ruled that the description and pictures of the goods, as well as the appended documents, would remain as evidence. The decision is in accordance with earlier case law on the matter.

Gérard-Gabriel Lamoureux, Cabinet Hirsch & Associés, Paris