It is possible that the rights of creators are exploited or disputed rightly or wrongly.
Unlawful exploitation of the brand may be attacked by its owner by an action for unfair competition or infringement proceedings.
- Action for unfair competition
On the basis of Annex VIII of the Agreement revising the Bangui Agreement, different specific situations of unfair competition may be envisaged:
- Creating confusion with the business of others
- Infringement of the image or reputation of others
- Deception to the public
- The denigration of the business of others, its activities or its products
- The disclosure, acquisition or use by third parties of confidential information
- Acts likely to disorient the competitor
If one of these facts is found, the proprietor of the brand has the possibility of legal action. Where the owner of a brand considers that a criminal act is being carried out on his goods, he shall bring the matter before the Court of First Instance. In order to initiate this action, a legitimate interest must be present. This condition implies that only those who have a right to use the brand (the proprietor of the brand, his successors in title, the assignee and the assignee) can act.
The applicant is obliged to take legal action within ten working days of notification of the detention of the goods.
In order to take legal action, the plaintiff may apply to the administrative or judicial authorities.
Concerning the administrative authorities, Article 12 of the Paris Convention for the Protection of Industrial Property states that "each of the countries of the Union undertakes to establish a special industrial property service and a central repository for communication to the public (...), trademarks ".In the OAPI space, it is the Director General who is responsible for publishing an official periodical sheet for the reproduction of registered trademarks. He is the authorized person to register the quarreled brand. The opponent's appeal is then to ask him to reconsider his decision.
As regards the judicial authorities, the merchant who fails to comply with the requirements relating to free competition may be exposed to various measures, ranging from a conviction to pay damages to his competitor, penal fines and which may result to a closure of the company. For these sanctions to be applied, the applicant must apply to the Court of First Instance for actions relating to trademarks. Where the action is "brought by way of correction, if the accused raises in his defense matters relating to the ownership of the brand, the competent court has the status of exception" (Article 47 (2) of Annex III The revised Bangui Agreement).
- Action for infringement
Counterfeiting is an infringement of an industrial property right. Trademark infringement consists in reproducing a trademark without the authorization of the owner of the intellectual property right.
Annex 3 of the Bangui Agreement cites the constituent material elements:
- Counterfeiting by affixing a brand belonging to another
- The possession of products bearing a counterfeit brand
- Counterfeiting by reproduction
- Counterfeiting by imitation of the brand of another
- Counterfeiting by product substitution
It is important to indicate the parties to the action:
The legal action must be initiated by any person having a legitimate interest. Thus, the applicants may be: the owner of the brand, the assignee, the co-owner or the beneficiary of the exclusive right of exploitation whose contract contains no stipulations to the contrary. The action must be brought against the named defendant, that is, the perpetrator of the offense.
Let us then state the competent court:
The competent court is that which is held by common law, namely that of the place of commission of the offense or that of the domicile of the defendant. An action for infringement may be brought by civil or correctional means. In the first case, the civil court is competent and considers as summary. In the second case, the criminal court seized may be subject to exceptions relating to the ownership of the brand raised by the defendant. If the criminal court is seized, the civil court will have to stay the proceedings.
As regards the proceedings, it should be noted that the proof of the infringement relates by any means. In addition to the usual modes that are notably the statement of bailiff, the testimony and the market investigation, seizure-counterfeiting is a mode particularly adapted to the action for infringement. The latter may be requested by the owner of the brand or the holder of the exclusive right of use.
However, the action for infringement may encounter obstacles. The defendant can demonstrate that the acts criticized are not counterfeit, either because there is in fact no likelihood of confusion or because it uses the sign outside the specialty. The defendant may also rely on the nullity of the trade mark or even on the earlier date of its exploitation.