A technology-focused société par actions simplifiée (SAS) incorporated in Germany had spent three years building brand recognition under a distinctive mark across European markets. When a French competitor began using a near-identical sign for overlapping services. The client faced a clear choice: act promptly through the French courts or watch accumulated goodwill erode in one of Europe's most commercially significant jurisdictions.
This case study examines a cross-border trademark dispute resolved through French intellectual property legislation and civil procedure, handled by Ferraz & Whitmore on behalf of an international technology client. The matter involved an infringement claim filed before the specialised IP tribunal in Paris. Supported by evidence gathered through a huissier de justice (court-appointed bailiff in French law). Additionally, concluded within approximately fourteen months from initial filing. The central lesson is that speed of response and precise classification strategy determine whether a foreign brand holder can secure enforceable relief in France.
This study covers the client profile, the strategic rationale behind the chosen approach, key procedural milestones, complications encountered, and three transferable principles for businesses facing analogous situations in France or comparable civil law jurisdictions.
Client profile and the challenge
The client was a mid-sized technology services provider structured as a Gesellschaft mit beschränkter Haftung (GmbH – a German limited liability company) with a French subsidiary registered as a société à responsabilité limitée (SARL). The group held a registered EU trademark covering two classes under the Classification de Nice (Nice classification), which organises goods and services into 45 distinct categories for trademark application purposes.
The infringing party was a French SAS active in adjacent digital services. Its mark was not identical – it differed in one syllable – but the visual and phonetic similarity was pronounced. Both marks operated in the same Nice classification classes. The infringing entity had filed its own trademark application with the Institut National de la Propriété Industrielle (INPI – the French national IP office) roughly eight months after the client's EU mark had been registered.
The commercial risk was concrete. The French subsidiary was losing prospective B2B contracts to the competitor. Sales teams reported that several procurement officers had confused the two brands during tender processes. Inaction carried a quantifiable cost: each quarter of unresolved confusion represented lost pipeline that could not easily be recovered after contracts were awarded.
For a deeper examination of how French intellectual property legislation interacts with EU trademark rules, see our dedicated resource on intellectual property law in France.
Strategy: rationale and sequencing
Two paths were available at the outset. The first was an opposition filing before INPI to block the competitor's pending trademark application. The second was a direct infringement claim before the Tribunal judiciaire de Paris (Paris civil court with exclusive IP jurisdiction in France), combined with an application for interim relief.
The team chose a dual-track approach. Opposition proceedings at INPI were initiated immediately. This placed the competing application in suspension and signalled to the market – and to the infringing party – that the client's rights were being actively defended. Opposition proceedings under French intellectual property legislation can take between twelve and eighteen months to conclude at the administrative level, which made them insufficient as a sole remedy given the ongoing commercial harm.
Simultaneously, the team prepared an infringement claim. Under Code de commerce (French commercial legislation), a foreign company holding a validly registered EU trademark has standing to bring proceedings before French courts without requiring a separate French trademark registration. This was a critical strategic point: several international clients in comparable situations incorrectly assume they must first obtain a French national mark. The EU registration was sufficient to establish priority and standing.
To support the infringement claim, a huissier de justice was commissioned to conduct a saisie-contrefaçon (seizure of counterfeit evidence – a procedure specific to French IP enforcement). This procedure allows a rights holder, with prior judicial authorisation, to have a court-appointed bailiff attend the infringer's premises and collect physical and digital evidence of the infringing use. The evidence gathered was significantly stronger than screenshots or commercial correspondence alone.
For clients operating technology businesses in France, the intersection of IP protection and digital regulation raises additional compliance considerations. Our analysis of AI and technology law in France addresses these regulatory dimensions in detail.
Key milestones and complications
The opposition filing at INPI was completed within the first four weeks. The infringing application entered suspension shortly after. The court application for a saisie-contrefaçon was granted on an ex parte basis – meaning without prior notice to the defendant – within approximately ten days of filing. The bailiff attended the competitor's registered address within a further week.
The first complication arose during evidence collection. The infringing party operated primarily through a cloud-based platform, and a portion of its material was hosted on servers outside France. The team addressed this by focusing the saisie-contrefaçon on locally accessible systems and supplementing the record with testimony from identified clients who had experienced brand confusion. This combination proved sufficient to satisfy the evidentiary threshold under French civil procedure rules.
The second complication was jurisdictional. The German parent entity sought to be named as a co-claimant alongside the French SARL subsidiary. French procedural rules required careful coordination of standing arguments to ensure both entities could participate effectively. The court accepted a joint claim structure on the basis that each entity held a distinct interest: the parent as EU trademark owner, the subsidiary as the directly affected commercial licensee.
The defendant raised a counterclaim for invalidity of the EU trademark, arguing that the Nice classification coverage was overly broad and that the mark had not been put to genuine use in all registered classes. This is a standard defensive tactic in French IP proceedings. The team responded with documented evidence of commercial use across the relevant classes – marketing materials, client contracts, and invoices spanning more than three years. The invalidity challenge was dismissed at the first instance hearing.
The matter settled before a full merits judgment was issued. The settlement terms included cessation of the infringing use, assignment of the contested French trademark application to the client, and a financial component covering a portion of the documented losses. The Cour de cassation (Supreme Court of France) had not been engaged, as the matter resolved at first instance. The total duration from first filing to settlement was approximately fourteen months.
To understand how comparable IP enforcement strategies have been applied in neighbouring jurisdictions, the approach taken in our trademark dispute case study for Portugal offers a useful civil law comparison.
For a tailored strategy on trademark enforcement and IP registration in France, reach out to info@ferrazwhitmore.com.
Three transferable lessons
Act within the first opposition window. French intellectual property legislation imposes strict deadlines for filing opposition proceedings once a competing trademark application is published by INPI. Missing this window forfeits a low-cost, administrative path to blocking a conflicting mark. International brand holders who monitor only their home jurisdiction's registers frequently discover French applications only after the opposition period has closed.
Use the saisie-contrefaçon before alerting the infringer. Many foreign clients instinctively send a cease-and-desist letter as a first step. In France, this approach carries a specific risk: a well-advised infringer may destroy or conceal evidence following receipt of a formal demand. The saisie-contrefaçon procedure exists precisely to secure evidence before any warning is issued. Initiating it before any direct contact with the opposing party produces a materially stronger evidentiary record.
Verify Nice classification coverage before entering the French market. The invalidity counterclaim in this matter – though ultimately unsuccessful – consumed significant resources and extended the timeline. Conducting a pre-entry trademark audit, confirming that Nice classification filings accurately reflect actual commercial use, and ensuring that use across all registered classes is documented from day one removes this vulnerability entirely. Engaging a lawyer in France with cross-border IP experience at the market entry stage, rather than at the dispute stage, consistently produces better outcomes. As an international law firm in France and across Europe, Ferraz & Whitmore advises clients on IP strategy before conflicts arise.
About Ferraz & Whitmore
Ferraz & Whitmore is an international law firm based in Lisbon, advising business clients across 46 jurisdictions. Our intellectual property practice covers trademark registration, opposition proceedings, infringement claims, and cross-border enforcement across both civil law and common law systems. The firm's IP team includes practitioners with experience before the Tribunal judiciaire de Paris, INPI, and the European Union Intellectual Property Office. We combine Portuguese civil law expertise with English common law tradition to deliver cross-border IP solutions for technology companies, international investors, and in-house legal teams operating across multiple legal systems. Ferraz & Whitmore is a member of leading international legal associations and participates in cross-border IP practice groups. To discuss your trademark enforcement or IP registration matter in France, contact us at info@ferrazwhitmore.com.
Disclaimer: This publication is provided for informational purposes only and does not constitute legal advice. The information herein should not be relied upon as a substitute for professional legal counsel tailored to your specific circumstances. Ferraz & Whitmore assumes no liability for actions taken or not taken based on the contents of this material. For advice regarding your particular situation, please contact info@ferrazwhitmore.com.