Can you use geographical names (the name of a country, region or city) in your trademark?
If it is possible to use geographical names as a trademark, care should be taken. Indeed, this practice is highly regulated and presents significant risks. A trademark that is misleading or does not comply with the rules on protected designations could be cancelled.
The possibility of registering geographical names as trademarks
Article L. 711-1 a) of the French Intellectual Property Code (CPI) provides that a trademark may include: "names in all forms such as: words, combinations of words, surnames and geographical names...aliases, pseudonyms, etc. ». The geographical name can therefore be registered as a trademark.
However, the following article (L. 711-2 CPI) specifies that the trademark must not be used to designate its geographical origin. Indeed, the mark must be arbitrary. If it indicates its own origin, it will be perceived as descriptive. The trademark "COUTELLERIE DE SAVOIE" could not be registered because the name SAVOIE must remain available to all traders operating in the branch and region in question. Conversely, the trademark "CHICAGO", registered for clothing, was registered because it was considered arbitrary.
The conditions relating to "appellations"
There are today several types of protected designations :
- The designations of origin (AOC in France, PDO in Europe) concern products whose particular quality is largely due to the geographical environment in which they are obtained. For an AO, the entire production process takes place in a given geographical area.
E.g.: green lentils from Le Puy, Bresse chicken, fourme d'Ambert...
- Indications of source (IP in France, PGI in Europe) designate the name of a region or town that is reputed for certain products. In this case, only part of the production takes place in the area concerned.
E.g.: Dijon mustard, Guérande salt, Charolais beef from Bourbonnais
- Traditional Specialities Guaranteed (TSGs), which do not refer to a provenance, but rather to the method of production of a product.
Ex: bouchot mussels, mozzarella, Serrano ham...
A protected name cannot be registered as a trademark, because it is by definition generic: anyone who is entitled to it can use it. The use of an AO or IP is subject to authorization. Attempts to circumvent it are doomed to failure.
But it is possible to integrate an AO into a complex trademark, if the designated product is entitled to it. For example, the trademark GOLD COLLECTION CHAMPAGNE can validly use the AO Champagne, since it concerns Champagne wines.
The case of the deceptive mark
Article L. 711-3 c) ICC provides that the trademark must not be such as to mislead the public as to the origin of the goods. Thus, the mark "BEL'MORTEAU" was considered deceptive to designate sausages that do not come from Morteau.
Similarly, table wines, made from various blends, may not contain geographical names even if they are not protected. Indeed, in the wine sector, consumers tend to associate the geographical name with an AO, even though these wines do not have a specific geographical origin.
The Consumer Code also penalizes certain practices, in particular the use of a trademark, name, sign or misleading indication likely to lead people to believe, when the products are foreign, that they have been manufactured in France.
If it is permitted to choose a geographical name in its trademark, the rules set out above must be respected. It should be recalled, however, that geographical names not covered by AOs may be included in a mark - but are subject to administrative control. Indeed, local authorities have the right to prohibit the use of the name of their municipality as a trademark, in particular by invoking their reputation (Art. L. 711-4 (h) IPC).