Right of priority on an international design: when protection does not extend to France

Imagine: you are a watchmaker in Saintes, proud to have filed an original design with the National Institute of Industrial Property (INPI). To extend your protection internationally, you use the Hague system, claiming priority of your French filing. You think you are covered everywhere in the world. But a competitor in Royan markets a nearly identical watch. You sue them for infringement. And then, surprise: the court declares your action inadmissible, because you did not designate France in your international filing. How is this possible? What does the law say? This is precisely the question that the Cour de cassation decided in its judgment of 15 March 2011.

Every property owner or real estate professional who creates designs (furniture, lighting, decorative objects) will one day encounter this question: does an international filing automatically protect all countries, including the country of origin? The answer, counterintuitively, is no. The decision we will analyse clarifies this crucial point: claiming a right of priority (taking advantage of an earlier filing date) is independent of the scope of protection conferred by the international filing. In other words, even if you filed first in France, if your international filing does not mention France, you cannot bring an infringement action on French territory.

In this article, we dissect the facts, the judges' reasoning, and the practical lessons to be learned to avoid such a pitfall. Whether you are a watchmaker in Saintes, a furniture manufacturer in Royan, or a property developer launching a line of designer furniture, this decision directly concerns you.

The facts: a story like many that happen every day

A company, which we will call "Montres Alpha", had filed a watch design with the INPI in France. Wishing to protect this design abroad, it made an international filing under the Hague Agreement of 6 November 1925 (in its 1960 version). In this filing, it claimed priority of its French filing, which allowed it to benefit from the first filing date for all designated countries. But note: the international filing form did not include the "France" box among the designated countries. The company perhaps thought that protection in France automatically followed from the initial filing, or that claiming priority was enough to extend protection to France. Serious mistake.

A few months later, Montres Alpha discovered that a competitor, the company "Mercedes Benz" (in the case, the companies Mercedes Benz France and Mercedes Benz Paris), was marketing a watch with similar features: compact case, thick hands, offset lugs. Montres Alpha then sued both companies for infringement of its design before the Paris Regional Court (tribunal de grande instance de Paris). The defence of the Mercedes Benz companies was not long in coming: they raised the inadmissibility of the action on the ground that the international filing did not designate France, and that consequently Montres Alpha could not claim an exclusive right to the design in France.

The court ruled in favour of the defendants. Montres Alpha appealed. The Paris Court of Appeal upheld the judgment: the infringement action was inadmissible. Montres Alpha then appealed to the Cour de cassation. The legal debate was launched: could claiming a right of priority in the international filing compensate for the absence of designation of France?

The reasoning of the court — analysed

The Cour de cassation, in its judgment of 15 March 2011 (No. 10-30.419), dismissed Montres Alpha's appeal. Its reasoning is based on Article 9 of the Hague Agreement (which governs the international deposit of industrial designs) and Articles 4 et seq. of the Paris Convention (which deal with the right of priority).

First, the Court recalls a fundamental principle: the international deposit of a design only takes effect in the countries expressly designated by the depositor at the time of that deposit. This is the principle of territoriality of intellectual property. In other words, if you do not tick the France box on your form, you have no rights in France, even if you have an earlier national deposit. Next, the Court specifies that claiming a right of priority (i.e., taking advantage of the first filing date to prevent a later filing by a third party from being considered earlier) is one thing; the scope of protection conferred by the international deposit is another. These two elements are independent. Priority only serves to determine the date from which protection is granted in the designated countries; it does not create protection in non-designated countries.

Applying this reasoning to the facts, the Court notes that Montres Alpha's international deposit did not cover France. Therefore, regardless of whether the company claimed priority of its French deposit: it cannot bring an infringement action in France because it holds no exclusive right there. The lower courts (court of appeal) had therefore correctly deduced the inadmissibility of the action. The Cour de cassation thus confirms a consistent line of case law: the international deposit is an "à la carte" system; it is up to the depositor to choose the countries where they wish to be protected.

What this changes for you — practically

This decision has very concrete implications for all design creators, whether they are real estate professionals (developers launching designer furniture ranges, interior architects creating lighting) or craftsmen (cabinetmakers in Royan, watchmakers in Saintes).

• For the design creator (right owner): You cannot simply make a "blanket" international deposit hoping to be protected everywhere. You must imperatively designate each country where you want protection. If you omit France, you will be inadmissible to bring an infringement action on French territory, even if you have an earlier national deposit and claimed priority. Concrete example: you create a designer chair in Saintes, you deposit it with the INPI, then you make an international deposit omitting France. A competitor in Royan copies your chair: you cannot sue them in France. Your only recourse would be to act in the designated countries, but not at home.
• For the competitor or operator (tenant, manufacturer): This decision is rather favourable. If you are sued for infringement, immediately check whether the claimant designated France in its international deposit. If not, you can raise the inadmissibility of the action. This is a powerful and cost-effective defence (no need to contest the merits, just the form).
• For the acquirer of a design: If you buy a licence or assignment of rights on a design protected by an international deposit, demand the list of designated countries. Protection in France is not automatic. A design may be validly protected in Germany but not in France. Check before signing.

Four tips to avoid this type of dispute

• Tip No. 1: When making an international deposit, tick ALL countries where you have commercial activity, including your country of origin. Never assume that national protection automatically covers you. The international deposit is independent of the national deposit. Careful verification of the form before sending is essential.
• Tip No. 2: Keep an accurate register of your deposits, with dates, designated countries and registration numbers. In case of a dispute, you will need to prove that France was indeed designated. A mere claim of priority is not enough.
• Tip No. 3: Before filing an infringement action, have a prior art search carried out by an industrial property attorney (CPI). This professional will verify the validity of your title and its territorial scope. They will prevent you from launching an action doomed to fail.
• Tip No. 4: If in doubt about the scope of your protection, consult a lawyer specialised in intellectual property law. A simple 30-minute consultation can save you much higher procedural costs. For example, in Royan, a firm can help you analyse your situation before taking action.

Further analysis: related case law and developments

This decision of the Cour de cassation is part of a consistent line of case law. Already, in a judgment of 13 November 2008 (No. 07-16.420), the Court had held that the international deposit of a design only confers protection in the designated states. The 2011 judgment merely confirms this principle by specifying the lack of impact of the right of priority. No reversal therefore, but a useful clarification.

Since 2011, the practice of international deposits has evolved with the entry into force of the Geneva Act of the Hague Agreement (1999), which simplified certain procedures. However, the principle of territoriality remains unchanged. French courts continue to apply this rule strictly. For example, the Paris Court of Appeal, in a judgment of 12 September 2019, reaffirmed that the absence of designation of France in an international deposit renders an infringement action inadmissible, even if the design is identical to an earlier national deposit.

For the future, it is likely that this case law will continue, as it is consistent with the letter of the texts. Creators must therefore be doubly vigilant when making international deposits. A mistake in ticking a box can be costly: not only the right to act in France, but also the loss of protection in a key market.

What you absolutely must remember

FAQ:

• Q: Can I bring an infringement action in France if my international deposit does not designate France, but I have an earlier national deposit? A: No. Claiming priority does not create protection in France. You must have designated France in your international deposit. Otherwise, your action will be inadmissible.
• Q: What if I already have an international deposit without France? A: You can make a new international deposit designating France, but you will lose the earlier priority date. For acts of infringement committed before this new deposit, you will not be able to take action.
• Q: Is the national deposit alone not enough to protect in France? A: Yes, the national deposit (INPI) protects in France. But if you later make an international deposit, you risk losing national protection if you do not maintain it. The international deposit does not replace the national deposit; it extends it to other countries.
• Q: What are the deadlines for designating a country in an international deposit? A: Designation is made at the time of deposit. It is possible to add countries later via a subsequent designation, but this incurs additional fees. Better to plan everything from the start.
• Q: How much does an international deposit with designation of several countries cost? A: Official fees vary depending on the number of countries. Allow approximately €500 to €1000 for a basic deposit, plus €50 to €100 per designated country. An industrial property attorney can assist you in optimising costs.

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