New weapons for indications of origin and localities in France

21 April 2014

On 17 March 2014, Law No. 2014-344 called "loi Hamon", introduced various measures relating to french consumer law.  One of the particular objectives of this legislation was to improve transparency on the origin and method of production of consumer products and to highlight the local know-how associated with a place of production.  Thus, this law has extended the existing protection of geographical indications applicable for natural products to manufactured products and improved the protection of the names of territorial authorities.

"Loi Hamon” has introduced a new kind of geographical indication which will be applicable to manufactured goods under certain conditions (e.g., Limoges porcelain).  The definition of such industrial and artisanal geographical indications is laid down in Article L.  721-2 of the French Intellectual Property Code:

"Constitute a geographical indication a name designating a geographical area or a specific location allowing to designate a product other than agricultural, forestry, food or sea products, originating therein and for which the quality, the reputation or other characteristics are essentially related to such geographical origin.

The production or processing conditions of this product, such as the cutting, extraction or the manufacture, comply with the specifications approved by a decision taken pursuant to article L.  411-4."

Article 73 of “loi Hamon” also introduces an alert system when a third party files a trade mark application reproducing the name of a territorial authority and opens the possibility for territorial authorities and defence organisations to file oppositions.

(i) New Article L.  712-2-1 of the French Intellectual Property Code provides the opportunity for local authorities to ask the French IP Office (INPI) to be alerted in case of filing by a third party of a trade mark application including its name or region name located on their geographical scope.
(ii) Article 73 of the "loi Hamon" amended Article L.  712-4 of the French Intellectual Property Code also opens up the possibility for territorial authorities and defence orgnaisations to file oppositions against trade mark applications reproducing the name of the concerned locality or the name of a geographical indication.  This broadens the group of potential opponents as previously, oppositions were only open to trade mark owners or exclusive licensees.

“Loi Hamon” has also introduced a new limitation to trade mark rights when an indication of origin is at stake.  Indeed, new article L.713-6-c provides:

"Registration of a trade mark shall not prevent use of the same sign or a similar sign as:

[…]

c)  geographical indication as defined by article L.  721-2, except where the trade mark, in the light of its reputation and renown and the duration of use, is the exclusive cause of the reputation or of the awareness by the consumer of the product for which a geographical indication is applied for."

“loi Hamon” has further added indications of origin to the list of prior rights that can invalidate a later trade mark (new article L.711-4 d).

The new system offers interesting weapons for local authorities and defence organisation to fight against the misappropriation of geographical names and indications of origin. The implementation of this new system by the French administration and judicial court remains to be seen.