Protection of the names of local authorities

The name of a local authority enjoys specific protection against appropriation as a trade mark. The French Intellectual Property Code lists among the earlier rights enforceable against a trade mark the name, image or reputation of a local authority or of a public body for inter-municipal cooperation. Local authorities may bring invalidity actions, file oppositions before INPI and ask to be alerted when trade marks reproducing their name are filed.

The requirement of harm

A local authority has no monopoly over its name. Case law requires it to establish harm to its interests, which in principle presupposes a risk of confusion with its own functions or damage to its image or to its residents. The reproduction of a municipality’s name in a trade mark is therefore not enough, especially where the sign is perceived as a reference to a traditional product or know-how rather than to the authority itself.

Available procedures

Since the 2014 Consumer Act, local authorities may ask INPI to alert them when an application containing their name is filed, which enables them to file an opposition within the statutory period. An invalidity action may be brought before INPI or before the Judicial Court, according to the rules of jurisdiction resulting from the 2019 reform. The same Act created geographical indications for industrial and craft products, which protect non-food products linked to a territory and may also found an opposition.

Additional grounds

A geographical name may also bar the registration of a trade mark on absolute grounds, where it designates the origin of the goods and is descriptive, or where it misleads the public as to origin and is deceptive. For .fr domain names, the French Post and Electronic Communications Code makes the registration of a local authority’s name by a third party conditional on a legitimate interest and the good faith of the applicant.

Key points

A local authority may oppose a trade mark reproducing its name, provided it demonstrates harm to its interests, mere reproduction of the name being insufficient. Local authorities should activate the INPI alert procedure and monitor filings that reproduce their name. Businesses should check, before filing a trade mark containing a place name, that the sign does not suggest a link with the local authority and does not mislead as to the origin of the goods.

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This glossary entry is general in scope and does not constitute legal advice.

Dhenne Avocats is a patent litigation firm. Matters outside that field, such as trade marks, designs, copyright and IT contracts, are handled by practitioners the firm works with regularly, and by the firm itself when they arise in a patent dispute.

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