Decree No. 2015-595 of 2 June2015, on the application of Article 73 of the Loi Hamon, has broadened the scope of Geographical Indications (GIs) to include industrial and artisanal products. Limoges porcelain, Calais lace, Lyon silk industry or Marseille soap for example may now enjoy this protection.
The aim of adopting these new GIs is not only to promote traditional products and French know-how but also to provide specific protection against parasitic passing-off of the image or reputation of a geographical region on account of its know-how.
These provisions were, in fact, enacted in the midst of the legal dispute over the name ‘Laguiole’. The village of Laguiole is well-known for the manufacturing of knives. However, the trademark was filed by an entrepreneur who sells knives imported from Asia. Pursuant to Article L 711-1 a) of the Intellectual Property Code (IPC), it is possible to file a geographical indication as trademark. However, Article L 711-4-h) of the IPC provides that a trademark shall not infringe the name, image or reputation of a local authority. The village of Laguiole initiated legal proceedings on this basis but its claims were unfortunately dismissed on the ground that it failed to demonstrate how the registration of such trademark might create a risk of confusion with its own attributes or violate public interests or cause prejudice to its inhabitants. Such a situation should not happen anymore, since following the creation of these GIs protecting industrial and artisanal products, the know-how of a geographical region in the manufacturing of artisanal and industrial products is now protected.
As for all geographical indications, one of the prerequisites to the protection of these GIs protecting industrial and artisanal products is the certification of the specifications. The National Institute of Intellectual Property (INPI) is the competent authority with regard to the certification procedure. Following the decision on the certification application, it will be published in the Bulletin of Intellectual Property. The newly created GI for industrial and artisanal products will then constitute a prior right to challenge the registration of a trademark. Any infringement of a GI protecting industrial and artisanal products is a counterfeit.
The newly created GIs for industrial and artisanal products enjoy an enhanced protection since this decree has also broadened the procedure for opposing the registration of a trademark bearing GIs. Since the 4th of June, it is possible to challenge on the ground of a previously registered or well-known trademark but also on the ground of the name of a local authority, of an appellation of origin, of an existing GI or of a new GI protecting industrial and artisanal products. The expansion of the scope of the opposition procedure allows the protection of these prior rights while avoiding the costs related to a lawsuit.
In light of these new provisions, it is important to incorporate in prior searches for the registration of a trademark these newly created GIs protecting industrial and artisanal products in order to avoid an opposition procedure or a subsequent lawsuit.