“Disparagement” – a very French approach
Compared to other countries such as the US, France has a conservative approach of when and how IP right holders are entitled to disclose a pending infringement dispute, under the legal concept of “disparagement”. The French Supreme Court long ago established the principle that an IP right holder’s disclosure to a client of an infringement claim against a competitor before any legal decision had been rendered made the IP right holder civilly liable for disparagement.
In its approach to disparagement, case law distinguishes between three different stages in the legal proceedings, depending on when disclosure occurs: (i) before any decision, (ii) after a first instance decision, and (iii) after a final decision. The first and third scenarios are clear-cut: disclosure before any decision is considered as disparagement under the above-mentioned principle, while the IP right holder’s disclosure after a final decision is generally tolerated (provided that disclosure is not wrongful).
The second scenario is not as straightforward, especially in the case of a first instance decision under appeal or a preliminary injunction ordered in summary proceedings. In this regard, more recent decisions suggest that the IP right holder may now communicate following a first win, as long as it does not insinuate that the competitor is definitely liable for infringement (in particular, because of the IP right holder’s negative comments on the decision).