(English) Using a geographical name in a trademark: watch out for pitfalls!
(English) Using a geographical name in a trademark: watch out for pitfalls!
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By Mathilde PONCHEL LEBOEUF
Spanghero has gone through a total makeover and got a new name – LA LAURAGAISE.
When faced with a national, or even international scandal, changing name is one method used to try and turn the page and move on (Costa Croisières is also said to be thinking of dropping its name).
However, it is essential in this context to pick up a name that is legally both robust and sound!
LA LAURAGAISE was selected by reference to the LAURAGAIS area (le Pays LAURAGAIS), which is located in the south-west part of France (a group of municipalities, just like le Pays du Cotentin, le Pays d’Auge…).
So this is clearly a trademark that uses a geographical name. While such a trademark is certainly strong from a marketing standpoint (as the land and the regions reassure the consumers), this is also an option that has substantial legal consequences!
In fact, there are a number of questions that should always be asked, before using a geographical name in a trademark:
– Is my trademark arbitrary? (As required under article L.711-2b of the French IP Code):
The trademark should not correspond to the geographical origin of the products (whatever the reputation of the location concerned), so that it is not descriptive.
As an example, the name COUTELLERIE DE SAVOIE (literally “Savoy cutlery”) was rejected on the ground that “this place name should remain available to all merchants who carry on or could carry on business in the sector and the region concerned”.
On the other hand, the name “COMPAGNIE DE CALIFORNIE” (for clothes) has been held as totally valid as a trademark.
– My trademark should not be of such a nature as to deceive the general public on the origin of the product (article L.711-2c).
The trademark LA PIZZA DE SAINT TROPEZ, which was filed by a frozen food manufacturer in the Vaucluse region in France, was cancelled, following an action taken by the municipality of Saint-Tropez.
You do not want to let one think that your trademark represents an official authority. As an example, the trademark TELESATELLITE EUROPE was rejected.
– My trademark should not be or recall an origin name or “appellation d’origine” (article L.711-4d):
*Registered designations of origin (AOC – Appellations d’Origine Contrôlée) designate basic products which are manufactured, produced and processed in the same geographic area. Typical AOCs include: Champagne, Noix de Grenoble, Miel de Corse, Piment d’Espelette… Protected designations of origin (AOP – Appellations d’Origine Protégée) are the European equivalent of the AOCs).
*You should not use a Protected Geographical Indication. This indication is used to distinguish products for which one of the preparation stages – but not all – took place in a specific geographic area (e.g.: duck foie gras in the south-west of France (canard à foie gras du Sud-Ouest)).
However, it is possible to include the AOC name in a complex trademark if the designated products are eligible to use AOCs.
– The trademark should not adversely affect the name, image or reputation of a local government or authority (collectivité territoriale) (article L.711-4 h):
Criterion: The local authority’s knowledge in the production of the products concerned (e.g.: VERSAILLES is recognized for confectionary).
Also, once a municipality’s name has become a generic name to designate a product, the municipality concerned may not oppose further filings of trademarks that will use the said name (e.g.: the term Laguiole has become generic to designate a specific type of knife manufactured in various areas of France, other than Laguiole).
Caution: There is a trend toward tougher protection of geographical names (e.g. Protected Geographical Indications, as currently used for food products, should soon be extended to manufactured goods), and local authorities are now well advised and begin to protect their names as trademarks.
Considering the foregoing, it would seem that using LA LAURAGAISE is a smart choice, in that this designation:
– is a modified geographical name (i.e. the exact geographical name is not used, so that the distinctiveness criterion is fulfilled)
– does not use any AOC
– does not detrimentally affect any local authorities (as this is not the name of any legal entity of any local area such as the LAUGARAIS)
Care should also be taken not to deceive the general public by implying that the product comes from the locality, while in actual fact it does not! Let us hope that the new business managers concerned will be vigilant on this point!
Just like LA BELLE ILOISE and LES TROPEZIENNES, this trademark – LA LAURAGAISE – seems to be a good compromise between the need to comply with legal restrictions, while meeting marketing requirements.
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