Glossary
French: prescription
Prescription is the rule that legal situations should no longer be open to challenge once a certain time has passed — what US lawyers know as a statute of limitations. In French trademark matters, the limitation period is five years.
Article L.716-4-2 of the Intellectual Property Code provides: “The infringement action is time-barred five years from the day on which the right holder knew, or should have known, the last fact enabling him to exercise it.”
The prevailing view treats trademark infringement as a continuing wrong (infraction continue) — it renews itself every day the infringing use continues. The limitation period therefore starts running only when the infringement has ceased. In practice, an ongoing infringement is never time-barred as such; prescription mainly limits how far back the damages claim can reach and bars actions over long-ended conduct.
The Lanham Act contains no federal statute of limitations; US courts borrow analogous state limitation periods and, above all, apply laches — a flexible, equity-driven defense. French law takes the opposite approach: a fixed five-year statutory period with a defined trigger, leaving far less room for judicial discretion. Note also the distinct five-year rule of acquiescence (forclusion par tolérance), which bars attacks on a registered mark knowingly tolerated for five years — a different mechanism often confused with prescription.
For US in-house counsel, the practical consequence of this difference in structure is predictability. Laches is famously fact-intensive: a US defendant has to prove unreasonable delay and resulting prejudice, and courts weigh the equities case by case, so two courts can reach opposite conclusions on similar facts. The French prescription rule asks a narrower, largely factual question — when did the right holder know, or should it have known, the last fact enabling it to act — and then applies the fixed five-year period mechanically once that date is fixed, with far less room for a court to bend the outcome either way. The tradeoff is that French rights holders who monitor the market properly rarely lose an infringement claim to prescription at all, precisely because a continuing infringement keeps resetting the clock — the rule mainly bites against stale, long-ended conduct or against damages reaching too far back in time.
This also explains why acquiescence and prescription are so often conflated by clients, even though the two mechanisms answer different questions. Prescription asks how long the right holder waited to sue over a given wrongful act; acquiescence asks whether the right holder knowingly tolerated the existence of a later, registered mark for five straight years, thereby losing standing to challenge its validity or use at all, going forward. A rights holder can easily be within the five-year prescription period on recent acts of infringement and still be barred by acquiescence from attacking the registration itself, if it knew about the later mark and did nothing for five years.
A US company discovers, in year six after a competitor first started using a confusingly similar mark in France, that the infringement has been continuous and uninterrupted since day one. Because French law treats trademark infringement as a continuing wrong, the five-year clock has not expired — the last infringing act was, in effect, yesterday. But the damages the US company can actually recover will typically be limited to the period reasonably within the five-year window, not the full six years of the infringement’s existence. Contrast this with a US laches scenario, where the same six-year delay might be argued, defendant by defendant, as an equitable bar to relief altogether, regardless of whether the infringement continued.
The limitation period surfaces whenever a US client asks how long it can wait before pursuing trademark infringement in France or before launching trademark litigation in France — the honest answer almost always turns on when the continuing-wrong clock is deemed to have started. See also trademark infringement and acquiescence.