Since the decree no. 2015-671 dated June 15, 2015, an alert procedure has been made fully available for local communities and public establishments for cooperation between local authorities (EPCI), pertaining to registration trademark applications containing their designation.
This service, which is free on behalf of the NIIP’s public service mission, allows them to receive alerts when a trademark application contains their name and it also allows them to file an opposition within a 2 month deadline following trademark publication. The procedure has been implemented by new Code of Intellectual Property Articles D712-29 and D712-30. They provide that an Alert be issued by the NIIP « within five work days following the trademark’s filing date if the trademark contains the name of the local community or the country concerned ».
A valuable legislative policy change for french trademark law
Before the modification, legislation did not grant protection to local communities and EPCI’s against abusive use of their names, and the criteria that allowed to qualify for likelihood of confusion were difficult to fulfill. The NIIP’s means were, as a consequence, very limited as to defence of local communities’ rights.
The LAGUIOLE case of 2012 before the Paris Court of Appeals (Cour d’appel) illustrated the issue, because the judges reacted to only one of the plaintiff’s claims based on provisions of Code of Intellectual Property Article L714-5 for failure to meet the requirement for genuine use of the trademark during 5 years.
In this case, a Val-de-Marne restaurateur registered 27 trademarks containing the name « LAGUIOLE » seemingly looking to take advantage of the small town of Laguiole’s reputation, which is worldwide for the quality knives that are made there. French NIIP Director said that the trademark « enjoys no notoriety within restaurant and food industry businesses. Used as a brand to identify these different services, the word « Laguiole » will conjure up (…) the common name for that particular type of knife, not the Proper name designating a town in the Aveyron region ».
Protection made easier in pursuance of the NIIP’s public service mission
The decree currently in force allows for local communities to defend ownership rights to their own name without having to hope for a favorable decision based on incidental facts that are foreign to the actual legal issue, as was the case with LAGUIOLE in 2012. That decision has been the subject of judicial review before the French supreme Court (Cour de Cassation) in October 2016, and is currently still waiting for a referral date before the Paris Court of Appeals in 2018.
This change in the legislation is a positive one. With the NIIP alert system in place, local communities are now equipped to prohibit trademark registration if said registration is inimical to their interests. It is through enforcement of new Code of Intellectual Property Article L711-4 h) and decree no. 2015-671 dated June 15, 2015 that the trademark PARIS BY PARIS could not be registered, none of the proposed products being made in France.
A growing number of local communities and townships have put the Alert system to good use by filing oppositions before the NIIP when the trademark registry application is inimical to « the name, image or repute of a local authority » per Code of Intellectual Property Article L. 711-4 h). Local communities are now better equipped to control brand name recognition and can avoid name hijacking by entities trying to piggyback their reputation with misleading representation and deceptive practices.
The extent of protection still unclear
The question that still remains to be answered concerns the full extent of the abovementionned protection and interpretation of Article 711-4 h) by the French NIIP.
In the PARIS BY PARIS case, the French NIIP ruled that « Code of Intellectual Property Article 711-4 h) does not prevent all third parties from registering a sign that identifies a local community as a trademark, but reserves such prohibition for cases where trademarking would be detrimental to public interests ».
It is a very engaging start, and a welcome change !