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) : « a sign that infringes prior rights, in particular : [...] the name, image or reputation of a local authority. " In addition, the Hamon Law (No. 2014-344) of 17 March 2014 created a right of alert for the benefit of local authorities. The latter can ask the INPI to inform them of any trademark registration including 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 consequently do not see the usefulness of Article L. 711-4 (h) CPI, it has certain advantages. The Commune of Paris often invokes this article.  

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

When it opposes trademark applications using the term "PARIS", the Commune de Paris generally relies on one of its many trademarks. It is in fact the owner of 78 trademarks containing this name. But it also very frequently invokes article L. 711-4 (h) CPI. In fact, the Commune de Paris explains that "the protection enjoyed by territorial authorities on their name [...] is based on a different basis than that which ensures the protection of a trademark. "According to it, this protection corresponds, for cities, to the protection of the patronymic name available to natural persons. The Director General of the INPI does not share this analysis. He considers that "the purpose of Article L. 711-4 (h) of the Intellectual Property Code is not to prohibit third parties, in a general way, from registering as a trademark a sign identifying a territorial 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 territorial authority to establish that this deposit "involves a risk of confusion with its own attributions or is likely to harm it or its constituents". The scope of this protection has not yet been fully determined. However, in two recent cases, the Commune de Paris won its case, at least partially, against the trademarks "#PARIS" and "#PARIS". "XXIE CONSERVATOIRE - CONSERVATOIRE FOR ADULTS IN 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. " Moreover, article L. 711-4 (h) CPI 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 sanction that was suffered by the town of Megève, in a case that opposed it to the leather goods manufacturer LE TANNEUR. Megeve had invoked the counterfeiting of its homonymous brand after having identified a range of bags named MEGEVE. LE TANNEUR defended itself and challenged the MEGEVE trademark for non-use for the bags. The court followed the leather goods manufacturer's reasoning and declared the trademark partially revoked. Therefore, we recommend that cities do not ignore article L. 711-4 (h) IPC when filing oppositions. And above all, not to hesitate to seek the assistance of a specialized attorney.