The protection of the name of local authorities…

As public law bodies exercising on their territory competences which are devolved to them by the State, local authorities (regions, departments, municipalities) benefit from a particular status which the legislator has taken into account by providing, in particular, within the Intellectual Property Code, specific bases allowing them to act against infringements which would be carried to their name, image or reputation (I).

However, these specific foundations have limitations that lead local governments to use other legal tools, in particular the registration of a trademark to protect their name (II).

Nevertheless, it is still possible for third parties to acquire trademark rights in the name of a local authority provided that they do not act in fraud of the rights or commit unfair or parasitic acts in particular (III).

I – The evolution of specific provisions of the Intellectual Property Code

• Existing provisions before the Law n°2014-344 of March 17, 2014 (Law on consumption, known as “Hamon Law”)

Since 1992, and until the end of 2019, the former article L.711-4 h) of the Intellectual Property Code provided that:

” A sign that infringes on prior rights, and in particular :

[…] (h) To the name, image, or fame of a local government.”

On the basis of this article, local authorities already had a tool enabling them to prevent a third party from acquiring trademark rights in a sign consisting wholly or partly of the name of a local authority.

In practice, the text could be implemented by local authorities in two ways:

Either a priori, in order to try to obtain the refusal of registration of the sign taking its name, by the means of the deposit at the INPI of observations of third parties, by application of the provisions of the former article L.712-3 of the Code of the Intellectual property which envisaged that ” during a period of two months following the publication of the application for registration, any interested person may submit observations to the [Directeur de l’INPI] “.

Thus, within two months of the publication of an application for a trademark bearing the name of a local authority, the body concerned could file observations with the INPI aimed at establishing, in particular, the infringement of its name, image or reputation by the disputed sign, within the meaning of the former article L.711-4 h).

However, this procedure has a limitation in that, unlike the opposition, l’INPI may take into account the observations presented to it by interested third parties, a copy of which must be sent to the applicant, but is not obliged to take these observations into account, or even to respond to them.

Or a posteriori, within the framework of a legal action for invalidation of a trademark already registered which reproduces the name of the local authority.

However, the provisions of the former article L.711-4 h) did not confer an absolute right allowing local authorities to obtain the invalidation of all trademarks bearing their name by the simple fact of their use. However, it is necessary for the body initiating the action to demonstrate, in accordance with the provisions of this article, that the disputed sign is detrimental to its name, image or reputation and therefore that the registration of the contested trademark is prejudicial to it.

This is what the ‘Cour de cassation’ (Cass. Com., Pourvoi n°07-19542, June 23, 2009) has made extremely clear:

” But whereas article L. 711-4 h) of the Intellectual Property Code Since the purpose of this provision is not to prohibit third parties, in a general manner, from registering as a trademark a sign identifying a local authority, but only to reserve this prohibition for cases where such registration results in an infringement of public interests, the Court of Appeal was not required to respond to the conclusions of the Court of Appeal. In this case, the Court of Appeals of the Republic of Lithuania has ruled that the filing of the application is inoperative, arguing that such an infringement would result from this filing alone; “

However, it appears from the case law that, even if the right of the territorial authorities on their name, image and reputation, resulting in particular from the former article L.711-4 h), is not subjected to the principle of speciality, the judges seek, in order to determine if the infringement is constituted, if the litigious sign involves a risk of confusion with the attributions of the territorial authority.

Thus, the ‘Tribunal de Grande Instance de Paris’ considered that the registration of the trademark JEUNES A PARIS to designate telecommunication services in class 38 (TGI,  n°03/04735, November 24, 2004), or the corporate name PARIS PLAGE (TGI, RG n°05-16680, May 3, 2006) did not infringe on the name, image or reputation of the City of Paris, insofar as the services designated by the contested signs were not exclusively within the scope of municipal responsibilities, so that the public is not led to believe that said services emanated from the City of Paris itself.

It is in these circumstances, and in particular after the Laguiole jurisprudence (TGI de Paris, RG n°10/08800, September 13, 2012; CA Paris, RG n°12/20559, April 4, 2014 – see The Laguiole judicial saga) that the legislator has sought to strengthen the legal means available to local authorities, while retaining the existing tools.

• The provisions put in place by Law n°2014-344 of March 17, 2014

In particular, the Hamon Law modified the former article L.712-4 which then provided in its 3° that:

” During the period specified in Article L.712-3,opposition to the application for registration may be filed with the Director of the National Institute of Industrial Property by :

[…] 3° A territorial authority under the terms of Article L.711-4 or under the terms of an infringement of a geographical indication defined in Article L.721-2, provided that this indication includes the name of the authority concerned; “

Thus, since 2014, local authorities had a new possibility which is to oppose upstream the registration of a trademark infringing their name, image or reputation.

In addition, the 2014 law had also added Article L.712-2-1 within the Intellectual Property Code which provides that:

” Any local authority or public establishment for inter-municipal cooperation may ask the National Institute of Industrial Property to be alerted in the event of the filing of an application for registration of a trademark containing its name , under conditions set by decree.”

Since the effective implementation of this alert system, by decree of June 15, 2015, several objections have been filed by local governments on this basis.

Thus, the commune of Paris was able to file an opposition against the trademark application on the basis of the infringement of its name, image and reputation and obtained the partial rejection of this deposit for the clothing, insofar as the INPI considered that these products fell under the clothing sector, in which the Paris commune is actively involved (INPI, Opposition n°16-3836, February 27, 2017). In this case, the ‘Cour d’appel de Paris’ went even further and found that the trademark application also infringed on the name and reputation of the city of Paris in relation to the jewelry and leather goods for which the INPI had rejected the opposition (CA Paris, RG n°17/06317, June 26, 2018).

• The transposition of Directive (EU) 2015/2436 of 16 December 2015

In 2015, a reform aiming to harmonize and modernize trademark law within the European Union was adopted by the European Parliament, a reform known as the “Trademark Package”.

This reform led to the adoption of Directive (EU) 2015/2436 of December 16, 2015, which was transposed into French law by Ordinance n°2019-1169 of November 13, 2019 and Decree n°2019-1316 of December 9, 2019. The reform went into effect on December 11, 2019.

The reform has not particularly brought any novelty in the field of protection of the name, image and reputation of local authorities. However, some of the provisions that form the basis for community action have been changed.

First of all, article L.711-4 of the Intellectual Property Code has been repealed, and its provisions have been integrated into article L.711-3, which now states that :

” A trademark that infringes on prior rights effective in France, in particular … may not be validly registered and, if registered, may be declared invalid:

[ 9° The name, image or reputation of a local authority or a public establishment of inter-municipal cooperation; “

The essence of the provision remains the same, local authorities can still oppose the registration of a trademark solely on the basis of their name, image or reputation. However, this amendment also extended this possibility to public entities and public establishments of intermunicipal cooperation.

Second, Article L.712-4 of the same Code has again been amended, and now provides that:

“Within a period of two months following publication of the application for registration, an opposition may be filed with the Director General of the National Institute of Industrial Property against an application for registration in the event of infringement of one of the following prior rights having effect in France:

[ 6° The name, image or reputation of a local authority or a public establishment of inter-communal cooperation;

[ Opposition may also be filed in the event of infringement of a trademark protected in a State party to the Paris Convention for the Protection of Industrial Property under the conditions laid down in Article L. 711-3, III. “

Finally, Article L.712-3 has also been amended as follows:

” Within a period of two months following publication of the application for registration, any person may submit to the Director General of the National Institute of Industrial Property written observations specifying the grounds on which the application for registration should be rejected in application of the provisions of this Law.on of 2° and 3° of Article L. 712-7.

Within a period of two months following publication of the regulations for use, any person may also submit written observations to the Director General of the National Institute of Industrial Property, stating the reasons why the application for registration should be rejected in accordance with the provisions of Articles L. 715-4 and L. 715-9. “

These last two amendments do not particularly change the rights of local governments over their names.

Article L.712-2-1 of the Intellectual Property Code remains unchanged.

Nevertheless, despite all the solutions provided for in the Intellectual Property Code, local authorities still rely on their trademarks when they can in an alternative or cumulative manner.

II – The use of trademarks by local authorities to protect their name

Many local authorities register their names as trademarks (City of Paris, Saint Tropez, Deauville…) for various products and services.

The acquisition of such a right allows local authorities not only to exploit their name in the context of a commercial activity to designate products and services derived from it, in particular by means of licenses granted to companies specializing in the sectors concerned, but also to enforce their rights against third parties in a manner that is sometimes more effective than on the sole basis of article L.711-3 9° (or former article L.711-4 h).

Thus, in its decision of May 3, 2006, the Tribunal de Grande Instance de Paris dismissed the City of Paris’ action for nullity introduced against the PARIS PLAGE on the basis of the infringement of the name of the city of Paris, but nonetheless found in favor of the company on the basis of its earlier trademark n°02 3 719 001 (TGI Paris, RG n°05-16680, May 3, 2006).

In addition, the Director General of the INPI has rejected the following trademark applications in opposition proceedings filed by local authorities, on the basis of the existence of a likelihood of confusion with earlier trademarks held by the opponent:

• The application for the trademark BISCUITERIE DE DEAUVILLE on the basis of the earlier trademark DEAUVILLE owned by the Commune of Deauville (INPI, Opposition No. 15-5576, April 25, 2016);
• The trademark application on the basis of the earlier trademark SAINT TROPEZ owned by the commune of Saint Tropez (INPI, Opposition No. 18-1134, September 14, 2018);
• The trademark application , on the basis of the earlier trademark CHAMONIX owned by the commune of Chamonix Mont Blanc (INPI, Opposition n°18-0641, August 30, 2018).
• The application for the trademark LE LAGUIOLE FRANÇAIS on the basis of the earlier trademark LAGUIOLE owned by the Commune de Laguiole (INPI, Opposition n°19-4845, May 4, 2020).

This being said, the rights are framed by the limits inherent to trademark law, such as the principle of speciality, which limits the protection conferred to the goods and services covered by the registration, or the risk of seeing one’s trademark partially or totally fallen if there is no operation for an uninterrupted period of five years.

In addition, the names of local authorities must, by their very nature, remain available for use by all in their descriptive function of a geographical origin.

III – The possibility for third parties to register the name of a local authority as a trademark and the limits that must be respected in this regard

The local authorities have additional prerogatives, but these are not necessarily sufficient to apprehend all the infringements of their rights.

In the absence of the two hypotheses mentioned above, the name of the local authorities can theoretically be registered as a trademark by third parties.

Thus, many trademarks consisting of geographical names are accepted for registration (MONT BLANC, EVIAN, SAINT MICHEL…) even though their owner is not linked to the local authority.

In 2018, the General Court of the European Union considered that the name DEVIN, corresponding to the name of a Bulgarian city, could be registered to designate beverages (CEU, aff. T122/17, October 25, 2018).

However, in practice, in order for this registration to be valid, it must not be fraudulent or mislead the consumer as to the origin of the designated goods and services.

Thus, case law has considered that a trademark consisting of the number 29, identifying the department of Finistère, did not infringe on the reputation of the local authority but nevertheless constituted a fraudulent filing insofar as ” the trademark right had not been created and used to distinguish products or services by identifying their origin, but was diverted from its function in order to reserve, by appropriating a sign identifying a department, a privileged and monopolistic access to a local market to the detriment of other operators prevented from entering the market ” (CA Toulouse, RG n°09/04200, May 31, 2011).

The ‘Cour d’appel de Paris’ also considered that the trademark LA PIZZA DE ST TROPEZ VALAIS was likely to mislead the public as to the geographical origin of the designated products and thus declared the trademark invalid (CA Paris, February 9, 2000).

In addition, local authorities can naturally take action against a third party who creates confusion or tries to benefit from the influence of the local authority and its investments, on the basis of unfair competition and/or parasitism.

Therefore, in practice, it is possible to register a trademark including the name of a local authority provided that the registration :

• Does not infringe on the name, image or reputation of a local authority that enjoys special recognition for the goods or services covered by the application.
• Does not infringe on any prior trademark rights.
• Do not be fraudulent.
• Is not deceptive, i.e., is not likely to mislead the consumer as to the origin of the designated goods and services.