Pursuant to certain provisions of the Hamon law[i] which increases the opportunities offered to local authorities and to public institutions for intercommunal cooperation (EPCI) to protect their rights, Decree No. 2015-671 of June 15, 2015 sets the conditions for an alert request in case a trademark which contains their name is filed.
In fact, some local authorities had been subject to appropriation of their names by third parties. Yet, they could only oppose the appropriation for products and services in relation to public service tasks entrusted on the account of the administered[ii].
For example, the city of Laguiole attempted to prevent the use of its name by a third party as a trademark. This third party was trading products which were not manufactured in the city. The Paris Court of Appeal, confirming a judgment at first instance, reversed the city’s claims for nullity of the trademark and deceptive marketing practices. According to the Court, “the reputation of the term “laguiole” is attached to specific products which are knives and cheese named after the city and it has not been shown whether the client has been misled regarding the geographical origin of the range of products whose trademarks include the term “Laguiole” when reading the catalogue thinking that they all originate from a small rural city of some 1,300 residents”.[iii] The Court of Appeal therefore not only upholds that the risk of confusion between the origin of the products and the city has not been proven but also and above all that the commune was not showing an infringement of its existing rights.
To overcome those difficulties, the Hamon law introduced the possibilities for economic actors of the craft and industrial industries and for the local authorities to request the protection of their industrial and craft products under geographical indications. The complex procedure requires amongst other things sending a homologation file.
The law also introduced the possibility for local authorities to make observations or to oppose the registration of a trademark which is likely to infringe the geographical indication or name, image or the reputation of the authority or institution according to Article L711-4 h) of the French Intellectual Property Code (CPI).
Without monitoring, this opportunity could risk falling into nonexistence. This has been accomplished since Article L712-2-1 of the CPI introduced by the Hamon law provides that: “all local authorities and public institutions for cooperation between local authorities can request the national Institute of Industrial Property to be alerted whenever a request for the registration of a mark bearing its name is filed according to the terms and conditions set out in the decree”. More than one year had to pass for this decree to set its conditions.
This alert procedure makes it possible to rapidly address an infringement and to benefit from the opposition procedure before the INPI.
In fact, it is very important today that local authorities and the EPCI protect their rights against the appropriation of their name. In this way, the opposition prevents the registration of a trademark before its exploitation if this trademark infringes the name, the image, the reputation of the local authority or of the EPCI.
Nonetheless, the opportunity to oppose a trademark and the chances of success of such a procedure should be examined. It is for local authorities and the EPCI to prove, during an opposition to the registration of a trademark, the infringement of their existing rights (for example the reputation or the image of the authority) or of their geographical indications.
Dreyfus offers to assist you in any claim for the protection of industrial and craft products with respect to geographical indications, in setting an alert or opposition to registering a trademark by taking into account the best strategy for promoting and protecting your rights in relation to those possibilities.
[i] Law N 2014-344 of March 17, 2014
[ii] TGI Paris, 3rd chamber, 3rd section, March 14, 2007, Cnosf, City of Paris / Gilbert L.
[iii] CA Paris, Avril 4, 2014, No. 12/20559