Defending the names and brands of local and regional authorities

Using a city name as a trademark: possible but within certain limits

It is possible to use a geographical name in a trademark. Many brands use the name of a city, either as the main name (Vichy cosmetics) or as an indication of origin (Lanvin - Paris). However, local and regional authorities have for some years now had the right to protect their names and to oppose unjustified commercial exploitation, whether or not they are trademark owners. This right is based on on Article L. 711-4 (h) of the Intellectual Property Code (CPI) : « may not be adopted as a trade mark a sign infringing earlier rights, in particular : ...] the name, image or reputation of a local authority. »

In addition, the Hamon law (n° 2014-344) of 17 March 2014 created a right of alert for the benefit of local authorities. They can ask the INPI to inform them of any trademark registration that includes their name. They can thus oppose troublesome filings, using a procedure usually reserved for the owners of earlier trademarks..

Although many local authorities have chosen to register their name as a trademark, and therefore do not see the usefulness of Article L. 711-4 (h) ICC, it has certain advantages. The Paris Commune very often invokes this article.

The Paris Commune in active defence of the name "PARIS".

When opposing trademark applications using the term "PARIS", the Paris Commune generally relies on one of its many trademarks. It is the owner of 78 trademarks bearing this name. However, it also very frequently invokes Article L. 711-4 (h) of the IPC. Indeed, the Paris Commune explains that "the protection enjoyed by local authorities over their name [...] is based on a different basis from that which ensures the protection of a trademark. "According to the Paris Commune, this protection corresponds, for cities, to the protection of the patronymic name available to natural persons.

The Director General of INPI does not share this analysis. He believes that "Article L. 711-4 (h) of the Intellectual Property Code is not intended to prohibit third parties, in a general manner, from registering as a trademark a sign identifying a local authority. "For him, such protection should be reserved for cases where the deposit leads to an infringement of the public interests. And in this case, it would be up to the local authority to establish that this deposit "entails a risk of confusion with its own attributions or is of such a nature as to prejudice it or its constituents".

The extent of this protection has not yet been fully determined. However, in two recent cases, the Paris Commune won at least partially against the trademarks "#PARIS" and "#PARIS". "XXIE CONSERVATORY - ADULT CONSERVATORY OF PARIS " thanks to article L. 711-4 (h).

Cities sanctioned for not using article L. 711-4 (h) ICC

Like Paris, the Commune of Saint-Tropez has registered several trademarks to protect its name. And it does not hesitate to take legal action for counterfeiting if any of the registrations are deemed to be too close. It has thus opposed the registration of the trademark MARIN DE ST-TROPEZ. When comparing the signs, the INPI considered that this mark was not an imitation of the SAINT-TROPEZ mark. The Commune then claimed that its reputation had been infringed. The INPI rejected this argument on the grounds that "... the trademark is not an imitation of the SAINT-TROPEZ trademark". if the community considers that the disputed deposit is prejudicial to its name, image or reputation, it had to file an opposition on the basis of Article L. 711-4 h) of the Intellectual Property Code. »

In addition, article L. 711-4 (h) ICC has the advantage of be able to defend the name of the local authority, without having to risk the revocation for non-use of the mark cited in the application. This is the penalty that the city of Megeve suffered in a case that pitted it against the leather goods manufacturer LE TANNEUR. Megève had invoked the infringement of its homonymous trademark after having found a range of bags named MEGEVE. LE TANNEUR defended itself and challenged the trademark MEGEVE for non-use for the bags. The Court of First Instance followed the reasoning of the leather goods manufacturer and pronounced the partial forfeiture of the mark.

Therefore, we recommend that cities do not neglect Article L. 711-4 (h) ICC in their objections. Above all, do not hesitate to seek the assistance of a specialist counsel.