WHAT LEEWAY IS THERE FOR GEOGRAPHICAL TRADEMARKS?
- DEFINITION: MEANING AND CONSEQUENCES:
A geographical trademark is in principle a word mark (if we exclude figurative signs representing the outline of a country, region, island, etc.). In former Article L711-1 of the French IP Code of 1992, geographical names were cited in a non-exhaustive list of word signs capable of constituting a trademark.
Such a word sign may have an exclusively geographical meaning (e.g. Australia, Naples, Monte-Carlo, etc.) or be polysemous (Rio, Amazon, Somme, Tours, Nice, etc.).
It may be that certain place names cannot constitute valid trademarks for some goods or services, on account of having meanings in addition to their geographical significance. Thus, the name of our capital PARIS cannot be registered for betting, due to lack of distinctiveness, since PARIS also means “bets” in French.
Among the grounds for rejection, for invalidity or for revocation that can affect trademarks, specifically because of their geographical meaning, most apply, prima facie, to any type of goods or services.
RANGING FROM REJECTION TO INVALIDITY…
To start with, among the absolute grounds listed in new Article L711-2 of the French IP Code, point 3° prohibits a trademark exclusively composed of elements or indications that can be used, in trade, to designate the geographical origin of the goods or services. This ground may apply when the geographical sign designates a place having a particular reputation for the goods or the services (for example Roissy or Orly for airport services, Rungis for food wholesale, etc.).
Point 4° of the same Article refers to a trademark composed exclusively of elements or indications which have become customary in everyday language or in the loyal and constant practices of the trade. This may concern geographical signs such as Dijon for mustard. Indeed, the name “Dijon mustard” designates a recipe or production process defined by regulations.
AND FROM MISLEADING THE PUBLIC…
Point 8° of the aforementioned article L711-2 envisions a trademark of such a nature as to mislead the public, in particular as to the geographical origin of the goods or services. The application of this ground, as with point 3° of the same article, requires a certain reputation of the place designated or evoked by the sign in relation to the goods or services concerned. However, although the ground at point 3° affecting a sign which exclusively designates origin is often insurmountable, that of misleading the public at point 8° is not always so. Indeed, if the distinctive character of the sign lies in one or more elements other than that indicating origin, an appropriate limitation of the goods and services to specify the geographical origin thereof to be consistent with that indicated or evoked by the sign may in some cases make it possible to overcome rejection of the application or invalidation of the registration. It is of course necessary for the goods and services actually to come from the indicated place. A trademark of which the specification has been limited to indicate a false origin of the goods or services, would, five years after its registration, be liable to revocation for inappropriate use.
…TO INVALIDITY THROUGH ONE’S OWN ACTION
Moreover, Article L714-6 of the French IP Code provides that a trademark owner is liable to revocation of their rights if, through their own action, the trademark becomes misleading, in particular as to the geographical origin of the goods or services. An example will illustrate this possible pitfall. Aoste is a small municipality of the Isère district having a population of 3000 of which there is little or no general awareness in the mind of the public, let alone any particular reputation for charcuterie. The trademark AOSTE was filed for the first time in 1976 by an eponymous company producing industrially prepared meat products, having its head office in the municipality and using the trademark for ham. At the end of the 1980’s, TV commercials were aired acclaiming the product under that trademark, to music by Verdi, accompanied by a female voice-over with a strong Italian accent reciting the catch-phrase “La musique est de Verdi ; le jambon d’Aoste”, which can be interpreted to mean that the music is by Verdi, the ham by Aoste (noting that the French preposition could equally be understood as from Aoste). Deliberate confusion was thus being introduced into the French consumer’s mind between the trademark and the region of the “Vallée d’Aoste” in north-west Italy (with a population of around 128 000), which had a certain geographical reputation with the French public because it borders with France and is in part French-speaking. The public could thus legitimately believe that the ham came from that region of Italy, although it was probably unaware of the existence of artisanal Italian ham from there (“Valle d’Aosta Jambon de Bosses”) which was available in small quantities.
- DIFFICULT GROUND FULL OF HAZARDS, DUE TO A MULTITUDE OF POTENTIAL PRIOR RIGHTS…
As with all trademark applicants, those applying for geographical trademarks must also pay attention to the prior rights of third parties, but the task of verification is more complex.
…NOT LIMITED TO “CONVENTIONAL” PRIOR RIGHTS…
It comes as no surprise that prior rights encountered by geographical trademarks are mostly “conventional” ones (i.e. third party trademarks, company names, trade names, signboards and domain names). All these prior signs can consist of or comprise an identical or similar geographical name, in connection with identical or similar goods, services or activities (or even dissimilar goods or services in the case of well-known trademarks). And the owners of all these prior signs are entitled to file oppositions or petitions for invalidation at the French IP Office.
In addition to the traditional owners of such rights (private individuals and companies), many towns (Paris, Cannes, Saint-Tropez, Deauville, etc.), or geographical authorities (Île-de-France, etc.) file their names as trademarks or reserve them as domain names, either to protect them in connection with an emblematic activity (festivals, luxury hotels, tourism, etc.), or for a variety of goods and services, in order to pre-empt parasitic uses or registrations of their name, or in order to profit therefrom by means of licenses. In practice, however, municipalities in general seek to protect their name in isolation without always trying to prevent the registration and use by third parties of distinctive signs including, among others, the name in question, for goods, services or activities having a connection with the territory concerned.
…BUT ALSO MORE PARTICULAR RIGHTS, RELATIVE TO THE PERSONALITY OF THE OWNER, THE NATURE OF THE SIGN AND/OR THE TYPE OF GOODS CONCERNED
THE NAMES OF GEOGRAPHICAL AUTHORITIES
Coming partially to the rescue of the geographical authorities who have not filed or reserved their name in connection with specialties or activities contributing to their renown, is the ground relating to point 9° of part I of Article L711-3 which is directed to geographical trademarks of third parties that are detrimental to the name, image or renown of French geographical authorities or public bodies concerned with intermunicipal cooperation. As a matter of fact, on this ground, such entities can file an opposition against registration of such trademarks or apply for invalidation as an independent and direct petition before the French IP Office.
The control applied by the judge shows that a company or private individual cannot file or use the name of a territory without restriction. On various occasions, the use of the name of territories, as a trademark or domain name, has been sanctioned against, in particular on the grounds of a risk of confusion in the mind of the public, of prejudice to prior rights or of acts of parasitism leading to misappropriation of internet traffic. By way of example, the Supreme Court upheld the invalidation by a Court of Appeal of a trademark (Bel’Morteau) containing the name of a municipality (Morteau) situated more than ten kilometers from the place of manufacture of the goods to which the trademark was applied, which was of such a nature as to mislead the public as to their origin (Cass. com., 30 November 2004, No. 02-13561). The appeal judge found there was prejudice against the prior rights of geographical authorities caused by the fling of a trademark in fields of activity in which their geographical designation is recognized (CA Paris, 12 December 2007, No. 06/20595; CA Paris, 1 February 2006, No. 04/22430).
GEOGRAPHICAL INDICATIONS IN THE BROAD SENSE
Geographical trademarks enter troubled waters when they apply more particularly (i) to agricultural products (in particular wines), forest products, sea products or other foodstuffs, which may be concerned by protected designations of origin (PDOs) or protected geographical indications (PGIs), (ii) or to certain industrial or artisanal products which may be covered by specific geographical indications, known as IGPIAs, defined in Article L721-2 of the French IP Code (e.g. Pierre de Bourgogne, Tapisserie d’Aubusson, Porcelaine de Limoges, Siège de Liffol, etc.).
The policing of all these “geographical indications” (GIs), in the broad sense meant by Article L722-1 of the French IP Code, is provided upstream by the French IP Office, which can assert the ground of rejection in point 9° of Article L711-2 of the French IP Code, when the trademark is “excluded from registration under national legislation, European Union law or international agreements to which France or the Union are party, which provide for the protection of designations of origin and geographical indications, traditional appellations for wines and guaranteed traditional specialties”.
If the trademark has been registered, any private individual or legal entity can petition for invalidation thereof on this ground before the French IP Office. No interest in bringing proceedings is required from the petitioner.
Moreover, a trademark detrimental to a GI (or an application for a GI subject to its later registration) cannot validly be registered or is liable to be declared invalid (point 5° of part I of Article L711-3). The registration of the trademark may be refused or cancelled for goods of the same type as those covered by the GI. On this basis not only is any person entitled to oppose a trademark application or apply for invalidation of the registration at the French IP Office, if they are authorized to exercise the rights arising from the GI concerned and in particular of ensuring management or defense thereof (the National Institute of Appellations of Origin, PDO unions, associations, etc.), but so too are geographical authorities or public bodies concerned with intermunicipal cooperation, provided the GI includes their name.
In the context of acts of infringement of GIs, the courts can take a broader view of the goods and services for which the trademarks are used. Thus, any direct or indirect commercial use of a GI could be condemned in relation to goods not covered by the registration of the GI, when those goods are comparable to those registered under that designation or when such use takes advantage of the reputation of the protected designation (article L721-8 of the French IP Code).
Lastly, the applicant for a geographical trademark or the owner of such a registered trademark, designating living plants, agricultural seeds, fresh fruit or fresh vegetables, must ensure their trademark does not consist of a prior registered variety denomination containing the same geographical name, or does not reproduce essential elements thereof, when the goods designated by the trademark are plant varieties of the same species as that so named, or of a closely linked species (point 10° of Article L711-2 of the French IP Code). In other words, the French IP Office can issue an objection on absolute grounds and, if appropriate, propose a limitation of the goods suitable for overcoming it, by express exclusion of the varietal species concerned. An application for invalidation is also open to any person before the French IP Office if the registered trademark breaches this provision.
On balance, the freedom of owners of geographical trademarks appears to be more restricted and under tighter surveillance than that of owners of word marks in other categories. European Union law is comparable but French legislation goes further in the protection of geographical indications and the names of geographical authorities.
We are at your disposal to check the availability of your signs, including geographical ones, and to ensure their protection and defense.
Michel George is a French IP Attorney and European Trademark and Industrial Designs Attorney. He has 35 years of experience in IP firms and has practiced in Santarelli since 2003. He assists a very diverse clientele, both in France and abroad, primarily in the field of trademarks and designs.