PARIS" trademarks - Beware of INPI notifications
In recent years, it has become complicated to register trademarks with the name "Paris". Indeed, since the Hamon law of 2014, local and regional authorities may oppose the registration of a trademark if it damages their name, image or reputation. This possibility is frequently used by the city of Paris to protect its name. However, the INPI also ensures that "PARIS" trademarks are not deceptive to the public. All trademarks for certain products must therefore be modified in order to be registered.
Not to damage the image of Paris
Long before the Hamon law, the name "PARIS" was already protected. The City of Paris had indeed registered many trademarks. These were aimed at almost all classes of products and services, in order to avoid any appropriation of the name by a third party. In addition to the trademarks "PARIS" or "VILLE DE PARIS", we also find the names of several events: PARIS BEACH, PARIS SLEEPLESS NIGHT, PARIS 2020. In all, there are about a hundred brands including the term "PARIS" and belonging to the City.
The difficulty is that some of these deposits are old. As they are not used for all the products and services concerned, there is a risk that they will be used for other purposes. a lapse for misuse. But the city of Paris can also defend its name thanks to article L.711-4h of the Intellectual Property Code. This article allows local authorities to oppose the registration of a trademark. The local authority will have to prove that the trademark infringes its name, image or reputation.
The Paris Commune thus filed opposition to the mark "PARIS BY PARIS". The INPI ruled that the preposition "by" could mislead the consumer as to the origin of the goods in question. As the city of Paris is renowned in the field of fashion, there was a likelihood of confusion in the mind of the consumer as to the origin and quality of the goods. Consequently, the deposit infringed the rights of the City of Paris.
Do not mislead the public on the origin of products
Even if there is no infringement of the rights of the City of Paris, there is a 2th difficulty: INPI. Indeed, the Institute of Intellectual Property has developed a very restrictive policy when examining trademarks containing the term "PARIS". The INPI thus almost systematically requires that the mention "all these products being of French origin or made in France." be added to the wording of the "PARIS" marks. Even the trademarks registered by the City of Paris are concerned.
Please note, however, that this requirement only applies to certain brands. These are marks for goods in Classes 3 (cosmetics, perfumes), 14 (jewellery), 18 (bags, leather goods) and/or 25 (clothing). For the other classes, the indication is not necessary. Indeed, for the INPI, when the mark serves to designate "...", it is not necessary to mention the name of the goods in the other classes. products which by their very nature belong to the French tradition, whether in the field of perfumes, cosmetics, leather goods, textile products such as clothing and clothing in general ", it should not be misleading. The consumer must be assured that products bearing the name "PARIS" are indeed made in France.
Conclusion: Caution with the "PARIS" brands.
Therefore, be careful when registering "PARIS" trademarks. First of all, make sure that your application does not infringe the prior rights of the City of Paris or its image and reputation. And above all, if you are targeting "French tradition" products, please include the following mention "all these products being of French origin or made in France." in your wording, to avoid delaying the registration of your trademark.