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CISG CASE PRESENTATION

France 17 February 2000 Appellate Court Rouen (Société Ma... R.A.S. v. S.A. T... Diffusion) [translation available]
[Cite as: http://cisgw3.law.pace.edu/cases/000217f1.html]

Primary source(s) of information for case presentation: Case text

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Case identification

DATE OF DECISION: 20000217 (17 February 2000)

JURISDICTION: France

TRIBUNAL: CA Rouen [CA = Cour d'appel = Appellate Court]

JUDGE(S): Credeville (president); Perignon, Le Carpentier (conseillers); Lecuyer (greffier)

CASE NUMBER/DOCKET NUMBER: 1998/710

CASE NAME: Société Ma... R.A.S. v. S.A. T... Diffusion

CASE HISTORY: 1st instance Tribunal de commerce de Louviers 26 June 1997

SELLER'S COUNTRY: Spain (defendant)

BUYER'S COUNTRY: France (plaintiff)

GOODS INVOLVED: Footwear


Classification of issues present

APPLICATION OF CISG: Yes

APPLICABLE CISG PROVISIONS AND ISSUES

Key CISG provisions at issue: Article 42

Classification of issues using UNCITRAL classification code numbers:

42C [Third party claims based on intellectual property: seller's obligation not applicable when at time of contract buyer knew of right or claim / right or claim resulted from technical drawings, designs, etc. furnished by the buyer]

Descriptors: Third-party claims

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Editorial remarks

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Citations to case abstracts, texts, and commentaries

CITATIONS TO ABSTRACTS OF DECISION

(a) UNCITRAL abstract: Unavailable

(b) Other abstracts

Unavailable

CITATIONS TO TEXT OF DECISION

Original language (French): CISG-France website <http://Witz.jura.uni-sb.de/CISG/decisions/170200v.htm>

Translation (English): Text presented below

CITATIONS TO COMMENTS ON DECISION

Unavailable

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Case text (English translation) [second draft]

Queen Mary Case Translation Programme

Appellate Court of Rouen 17 February 2000

Translation [*] by Katarina Kunce Kern [**]

[PARTICULARS]

Defendant-Appellant MA... R.A.S. Company [Seller] vs. Plaintiff-Appellee SAT ... DIFFUSION [Buyer]. Appellate Court of Rouen, Second Civil Chamber. Decision appealed: Judgment of Tribunal de commerce de Louvriers 26 June 1997. Appellant: [Seller], registered office at (...) (Alicante) Spain, represented by SCP C...V... R..., solicitor, assisted by L..., attorney at law. Appellee: [Buyer], registered office at (...), Saint Pierre du Vauvray, represented by SCP T... -D..., solicitor, assisted by V..., attorney at law.

Composition of the Court: President Mrs. Credeville, Judge, in the presence of Associate Judge Mr. Perignon, asisted by Mrs. Lecuyer, Court Clerk listened to the pleadings with no objection of solicitors or attorneys.The Judge understood the pleadings brought before the Court: Mrs. Credeville, President, and Mr. Perignon and Mrs. Le Carpentier, Associate Judges. Arguments: At a public hearing on 4 Jannuary 2000. Decision: At public audience on 7 February 2000, ruling pronounced publicly by Mrs. Credeville, President of the Court. who signed the transcript of the judgment with Mrs. Lecuyer, Court Clerk.

CASE AND PROCEDURE

[Seller], a Spanish company, produced footwear trademarked «Fouille», by order of and for the account of [Buyer], a French company, which the [Buyer] distributed ...

This trademark was disputed in proceedings before the Commercial Court in Paris. French company J...F... commenced an action against [Buyer] there for infringement. On 30 December 1995, the court prohibited [Buyer] from producing and distributing footwear of the trademark «Fouilles». The [Buyer], on 20 December 1996, contested the infringement result obtained by J..F... company, and claimed for payment of 1,900,000 French francs [FF] in damages and interest. On 29 January 1997, J...F... company and [Buyer] settled their differences under conditions by which the [Buyer] deposited with J...F... company the amount of 300,000 FF for contract damages and infringement, and for renunciation of the procedings.

[Buyer] then summoned the [Seller] to the Commercial Court of Louvriers, considering [Seller] responsible for the alleged infringement payment that [Buyer] made to J...F... company, seeking to have [Seller] indemnify [Buyer] for the damages that [Buyer] suffered from the procedure started by J...F... company.

The [Buyer] pleaded to have the Commercial Court of Louvriers direct the [Seller] to reimburse:

By court decision on 26 June 1997, the Commercial Court of Louvriers ruled that [Seller] was responsible for the infringement claim made by J...F..., directing [Seller] to refund to [Buyer] the amount which the latter compensated J...F... company by right of interfered transaction, in addition the amount of 300,000 FF for interest, as well as 350,000 FF by right of damages (230,000 FF for contractual damages and 120,000 for loss of profit, and procedural expenses in the amount of 120,600 FF.

The [Seller] appealed this decision.

[SELLER'S POSITION]

[Seller] alleged that:

[...]

[Seller] seeks invalidation of the decision of 26 June 1997 and the dismissal of [Buyer]'s claims, and to have [Buyer] directed to compensate [Seller] in the amount of: 200,000 FF by right of damages made from abusive procedure, and 40,000 FF according to article 700 of the new Civil Procedure Law.

[BUYER'S POSITION]

[Buyer] petitioned for confirmation of the decision which condemned [Seller] and the annulment of [Seller]'s estimation of the damage, payment to the [Buyer] of the amount of 1,070,000 FF by right of damages and interest by right to add the assignment to pay the amount of 50,000 FF according to article 700 of the new Civil Procedure Law.

[Buyer advances the responsibility of the [Seller] who realized and produced the model. ...

RULING OF THE COURT

It is not seriously contested that in fact the [Seller] supplied the ribbons on which the infringement issues turn. However, it has not been determined: whether [Seller] ordered the model as a sample from J... F company, as Mr. N... F..., the Commercial Director testified on 27 August 1999 that the detailed invoice which determines the meters and the references of the order does not prove this allegation That this supply must have been made by a compatriot has not been further emphasized. The invoice which overturns the pleadings does not permit one to determine whether the ribbons bought by the company E...SL on 31 July 1996 were the ones in the sold footwear; there is a confusion about the recipient of this order:

RAS SHOES SL,
(...) ALICANTE, ESPAGNE

and

company MA...SL
(...) ALICANTE, ESPAGNE

Furthermore that on 2 April 1997, the Spanish office for patents and trademarks approved the assignment of trademark RAS to MA.. SL company, also that MA... company, the titular holder of this trademark sustains that its social name does not support the acronym RAS and is uniquely composed in the term MA... followed by initiales SL..., and that MA.. company during the previous preceedings did not dispute the libel for the social reason.

Regarding the admissibility of guaranty appeal engaged by [Buyer] against the [Seller], the [Seller] MA... claims that is unacceptable to react against the guaranty, and that exercising the guaranty is open only to persons acting in good faith (bona fide), and that for [Buyer]'s claim to succeed the bad faith (mal fide) of the importer has to be presumed.

But considering that the guaranty applicant, the [Buyer], ordered the goods from the [Seller], who produced them, because this last guarantees for the damage made to J...F... company; that in case of infringement, the bad faith (mala fides) of the importer is presumed, that this presumption regards the relations between the importer [Buyer] and the victim of the infringement [J... F... company] and not in this case between the French [Buyer] and Spanish [Seller], where the French [Buyer] had ordered the products made in Spain.

Concidering that, according to article 42 of the United Nation Convention on the International Sale of Goods, signed in Vienna on 11 April 1980, applying in the case where the contract for the sale of goods was entered into between parties with their registered offices in different States:

"(1) The seller must deliver the goods which are free from any right or claim of a third party based on industrial property or other intellectual property, of which at the time of the conclusion of the conctract the seller knew or could not have been unaware, provided that the right or claim is based on industrial property or other intellectual property:

[...]

"(2) The obligation of the seller under the preceding paragraph does not extend to cases where:

  1. at the time of the conclusion of the contract, the buyer knew or could not have been unaware of the right or claim; or
  2. The right or claim results from the seller's compliance with tehnical drawings, designs, formulae or other such specifications furnished by the buyer."

Whereas, subject to the knowledge of the intellectual property rights by the buyer, the Vienna Convention stipulates that the seller has to deliver the goods free and clear of the intellectual property right "which he knew or could not have been unaware of in the moment of the conclusion of the contract."

Concidering that the seller, the titular holder of the right did not adress the notice to the buyer of sample, the producer, however this cannot be objected to him because it was reasonable to wait for the order during the delivery of samples, but the producer residing in Spain could not be unaware of the rights which were not deposited in his country; Because he bought the ribbons in France with the intention to put them on goods, which had to be sold in France, and could not be unaware of his rights in case he continued to legally search for their existence;

Considering that the seller is not responsible until the buyer acquaints him with the intellectual property rights invoked against him, in other words, until he acknowledges the existence of the model deposited by the J...F... company and eventually the nature of infringement on the goods considered.

The buyer, as an informed professional, could not ignore the infringemental nature of the ribbons which he presented and sold in France; that even more, he has to be informed on the existence of the protected rights in the French market, or even less, to demonstrate that he knows all the information which allow him to avoid the risk of the infringement.

The seller is not responsible to the buyer where the reclamation based on the intellectual property right of a third person resulted from the seller accomodating instructions issued by the buyer.

According to all this, it is necesary to state that the seller conformed to the instructions issued from buyer regarding the shoe model but not the ribbons, and this was not the question at the moment of the order, only to choose the design and that the buyer could legitimately ignore that the producer copied the original deposited in the national institute of intellectual property.

It is deduced from the above, that the buyer acted knowingly and that the buyer's knowledge about rights invoked against him, frees the seller from the responsibility which he cannot exercise the guaranty in derogating the dispositions of the Vienna Convention, in forseeing its article 12 [sic.] , admitting the guaranty clause permitting the refuge of buyer in recognizing the case against the seller. [Translator's note: «article 12» appears to be a typographical error, with «article 42 CISG» intended.]

In fact the clause that could shape to sale conditions or to the ordered goods was not even pleaded. In this situations the decision has to be invalidated.

However, the abusive character of the procedure is not proved; therefore, the damage claim of the [Seller] has to be rejected.

It is unjust to charge the expenses to the [Seller] in the amount of 10,000 FF that he stated, who was not attracted either by J...F... company or by [Buyer] in the instance which ended in the transaction where he could debate and defend the rights.

FOR THESE REASONS

The Court:

-   Reverses the judgment of 26 June 1997;
- Rejects the claims of [Buyer];
- Rejects the damage claims of [Seller];
- Rules that [Buyer] is obligated to pay to [Seller] the amount of ten thousand francs (10,000 FF) according to article 700 of the new Civil Procedure Law; and
- Orders the payment of expenses by [Buyer] with the right of direct recovery of attorneys' fees in the case, according to the article 699 of the new Civil Procedure Law.


FOOTNOTES

* All translations should be verified by cross-checking against the original text. For purposes of this translation, the Plaintiff-Appellee of France is referred to as [Buyer] and the Defendant-Appellant of Spain is referred to as [Seller]. Amounts in the currency of France (French francs) are indicated as [FF].

** Katarina Kunce Kern, a law graduate of the University of Zagreb, is a member of the Bar of Croatia who has worked with French diplomats in Croatia.

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Pace Law School Institute of International Commercial Law - Last updated March 25, 2004
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