A few days after French law of 11 March 2014 fighting against the infringement of IP rights (See our article), another important French law was adopted by Parliament and enacted by the Government: French law of 17 March 2014 related to protection of consumers.
Among the many clauses of this new law are the creation of a class action, several measures aiming to improve information towards consumers, consumer credit or insurance contracts, new and strengthened powers for authorities regulating and enforcing fair competition, aggravated sanctions in case of breach of the French Consumer code, etc.
But there are two subjects that directly concern the French Intellectual Property Code (IPC). The new law creates new types of geographical indications related to manufactured goods and provides for a new protection of the names of regional authorities.
New geographical indications
Undoubtedly this is the most important aspect of the new law as regards IP rights.
Up to now, French legal framework did not make it possible to have geographical indications protected in connection with manufactured products but only in connection with agricultural products and foodstuffs. But from now on, new geographical indications may be protected in connection with industrial and hand-crafted goods.
This is clearly a new, original and somehow revolutionary way to protect French regional and traditional know-how (1) and we believe this is an unprecedented initiative.
What are they?
According to the new definition set by Article L.721-2 of the IPC, must be considered a geographical indication the name of a geographical area or of a specific place which serves to designate a product, other than agricultural, forester, alimentary or from the sea, which is native from such area and has a specific quality, reputation or other characteristics that are essentially attributable to this geographical origin.
The definition is basically the same as that of traditional designations of origin.
How will they be registered?
The INPI, the French patent and trademark office, will be in charge of registering new geographical indications, following the approval of specifications related to the concerned product, the geographical area to which it is associated, the quality, the reputation, the traditional know-how or any other characteristics that the product has, its production or transformation process, etc. After they are registered, these geographical indications will be managed and defended by private-owned associations or organizations.
Approved geographical indications, together with their specifications, will be published in the French Industrial Property Journal.
Entities or companies wishing to use these geographical indications will have to become members of the corresponding private-owned organizations and registered as such into official lists kept by the INPI and also published in the French Industrial Property Journal.
What will be the consequences for trademark owners?
These new geographical indications become part of prior rights and titles that can form an obstacle to trademark registration (2) and private-owned organizations in charge of managing and defending geographical indications are entitled to file oppositions against conflicting French trademark applications before the INPI (3).
This means that such new geographical indications must be taken into account when performing availability searches prior to filing French or even Community trademarks.
In the same time, Article L.713-6 of IPC provides for a specific adjustment to make it possible for trademarks and new geographical indications to coexist. “Registration of a mark shall not prevent use of the same sign or a similar sign as: […] c) A [new] geographical indication, except when the mark is, because of its notoriety or the length of its use, exclusively responsible for the reputation or the awareness of the product bearing such geographical indication for the consumer.” In any case, Article L.713-6 still provides that “However, where such use infringes his rights, the owner of the registration may require that it be limited or prohibited.”
Although it is not absolutely clear, these provisions seem to establish that when a trademark is composed of a geographical name and when it has exclusively contributed to the reputation of such geographical area, its owner will be able to prevent the use of an identical geographical indication.
Better protection for the names of regional or local authorities
French law of 17 March 2014 related to protection of consumers also creates a new type of protection for the names of regional or local authorities, whether they be the names of towns, of villages, of departments, of regions, etc.
Names, images or reputations attached to regional authorities were already part of prior rights and titles forming obstacles to trademark registration (4). However, when in need of protecting their names or images in such cases, local authorities were compelled to bring their actions before the courts and ask a posteriori for the conflicting registered trademarks to be cancelled.
From now on, regional or local authorities are entitled to file oppositions against conflicting French trademark applications before the French patent and trademark office. And not only are they entitled to do so when trademark applications are conflicting with their names, their images or their reputations, but also when trademark applications are conflicting with geographical indications if such indications are composed of their names (5).
This is real good news for local authorities since the opposition proceedings allow to react preemptively, before the trademarks are registered and, in most cases before the trademarks are used and can cause damage. Besides, filing an opposition before the INPI is much cheaper than filing a lawsuit before the courts.
What trademark owners should be worried about?
One could reasonably wonder how such oppositions will be dealt with by the trademark office. Trademarks are filed and registered in connection with goods and services designated precisely (principle of specialty). But it seems to us that names or images or reputations attached to local authorities are not necessarily associated with specific products and services.
Does it mean that local or regional authorities will be able to oppose successfully any trademark application whatever goods and services are covered? Or will they be requested to justify that their names are indeed associated or well known in connection with identical or similar goods and services as those covered by the challenged trademark applications?
It seems very hard to know. But it certainly means that future applicants must be very careful when performing availability searches and before filing new trademark applications.
And we must insist that the chance for trademark owners is not only theoretical since new Article L.712-2-1 of IPC allows local and regional authorities to appoint the INPI in order to be kept informed in case new trademark applications containing their names are filed. In other words, the INPI will now perform a monitoring of their names for local authorities requesting it (6).
What local or regional authorities could do
The new French law gives us an opportunity to recall that local or regional authorities such as municipalities may also use trademark law as everybody else and file their names as trademark applications or as part of trademark applications.
This is a very good way of protecting their names in connection with their specific know-how, either goods or services, whether against ill-intentioned people or to be more in control of their image and reputation. Such practice, which may be seen at first as inappropriate for public entities, is a much better strategy to fight against unauthorized use of their names.
What you need to remember
The new French law related to protection of consumers provides new types of protection for geographical names, both geographical indications and names of regional authorities.
Clearly many towns or small localities will take advantage of these new measures to try and protect their names and/or the specific know-how attached to their geographical areas. And recent French judicial examples show that this is not fiction (7).
This is why these new types of protection must not be ignored by French trademark owners of future applicants of French trademarks, especially at the stage of availability searches. Using a geographical name into a trademark may really mean serious problems.
(1) We had already talked about such issue in an article about the Savon de Marseille.
(2) “Signs may not be adopted as marks where they infringe earlier rights, particularly: […] d) A protected appellation of origin or geographical indication” (Article L.711-4 of IPC).
(3) Article L.712-4, 4° of IPC.
(4) “Signs may not be adopted as marks where they infringe earlier rights, particularly: […] h) The name, image or reputation of a local authority” (Article L.711-4 of IPC).
(5) Article L.712-4, 3° of IPC.
(6) It must be recalled that the INPI does not perform a relative ground examination for French trademark applications but only an examination based on absolute grounds for refusal.
(7) For example, French township of Laguiole recently filed a lawsuit against one physical person who had the same name registered as a trademark and against manufacturers using this very same name as a trade name all in connection with knives. And the name Laguiole is indeed associated in France and some other countries as a well-known place of origin for high-quality knives. But the lawsuit was lost because the township of Laguiole could not evidence specific or long-term reputation of their town in connection with knives.