Paris Court of Cassation - BURBERRY LIMITED, LOUIS VUITTON AND AL V/AJ MODA AND AL
Paris Court of Cassation
BURBERRY LIMITED, LOUIS VUITTON AND AL V/AJ MODA AND AL
Principle ne bis In idem does not apply, i.e., the same facts can be condemned on two different grounds, import without declaration of prohibited goods and import of goods infringing a trademark
In April 2012, the Customs services of Roissy (Paris Charles de Gaulle airport), checking parcels arriving from China, retained scarves alledely infringing Louis Vuitton, Burberry and Marilyn Monroe trademarks.
Investigation in the warehouse of the importer. Seizure. Action brought against the importing company and two individuals before the Criminal Court for import without declaration of prohibited goods and trademark infringement.
Paris Court of 1st instance condemned the defendant. Confirmed by the Paris Court of appeal that decided to punish the two individuals to a conditional sentence of 6 months imprisonment, ordered the destruction of the goods and 200.000 Euros customs fine. However, the Court of appeal rejected the infringement action based on the Marilyn Monroe trademark (lack of evidences of the trademark registration by the right holder that did not provide any copy of the trademark registration, nor their registration number)
The defendants filed an appeal before the criminal section of the Court of cassation on the following main grounds:
- - under the principle ne bis in idem, the same facts may not be condemned on different grounds, i.e., import without declaration of prohibited goods (1) and import of goods infringing a trademark (2);
- - the court may not order the destruction of the products if the infringing action is rejected
On the 1st question, the Cour de Cassation responded that the two qualifications of import without declaration of prohibited goods and import of goods infringing a trademark may be applied concurrently. The same facts can be punished by the judge under both the criminal and customs actions under the condition that the sanction is proportionate and predictable. The global amount of the penalty ordered may not exceed the highest amount of the criminal penalty of each ground (no cumulative penalty).
On the 2d question, the Cour de Cassation annulled the ruling of the Court of appeal that ordered the destruction of all goods (including the Marilyn products) but decided that the Marilyn trademark infringement action should be rejected for lack of evidences of the trademark rights (no registration certificate, no registration number provided).