When Paris fights to protect its hashtag

Under French trade mark law, local authorities receive specific protection in relation to their name image or reputation. Article L 711-4 h) of the French Intellectual Property code states that a sign shall not be registered as a trade mark if it infringes earlier rights such as, in particular, the name, image, or reputation of a local authority.

This provision is frequently used by municipalities or regional representative bodies in order to prevent registration and use of their name or any other of their distinctive features as trade marks.

However, and for a long time, the French Intellectual Property code did not mention the possibility to file opposition proceedings on this ground. Only trade mark holders could file oppositions before the French Intellectual Property Office (« INPI »). Where they did not have any registered trade marks, local authorities were only left with the possibility to bring an action before courts.

In 2014, the French consumer law No. 2014-344 (« Loi Hamon ») finally introduced the possibility for local authorities to oppose registration of a trade mark on the ground of Article L 711-4 h). The City of Paris has recently made use of this.

In 2016, an individual filed an application for the registration of the semi-figurative trade mark (above) in classes 14 for jewelry, watches and precious metals, 18 for leather, luggage and bags and 25 for clothes.

The City of Paris filed an opposition arguing that such registration would be prejudicial to its name, image and reputation. The INPI rejected the application for the goods in class 25 but accepted the registration for the goods in class 14 and 18 because the damage to the name, image or reputation of the City of Paris was not demonstrated for these goods.

The City of Paris appealed the decision.

In a decision of 26 June 2018, the Paris Court of Appeal reaffirmed that the provisions of Article L 711-4 h) of the French Intellectual Property Code are not intended to prevent third parties from registering or using as trade marks signs that identify local authorities. Such prohibition shall only apply in the event that the registration is prejudicial to the public interests and, in particular, where there is a likelihood of confusion with the functions and responsibilities of the local authority, or when the registration of the sign is detrimental to the local authority itself or to its citizens.

However, the Court considered that, in this particular case, the registration of the trade mark would be prejudicial to both the city and Parisians’ interests. Consequently, it decided that the application for the registration of the trade mark (above) should be fully rejected.

According to the judges, there is a close connection between the sign (above) and the name « Paris » since the name « Paris » which is the only verbal element of the contested sign, is the dominant element because of its bold, very large characters underlined with a thick line. The presence of the symbol "#" (hashtag) before this name, which is commonly used on social networks to introduce a term, highlights it and encourage the consumer to understand the final name Paris as the designation of the City of Paris.

The Court approved the decision of the INPI as it has rejected the registration of the contested sign for the goods in class 25. Indeed, the Court affirmed that the City of Paris is involved in fashion, uses its name to encourage and promote the creation, development and distribution of clothes and haute-couture works and has an excellent reputation in this field.

However, and unlike the INPI, the Court of Appeal considered that the application should also be rejected for goods in class 14 and 18. Indeed, jewelry and leather items are luxury items and the City of Paris has also built a strong reputation in luxury. In addition, the judges note that those items are complementary to those in class 25.

Therefore, the registration of the contested sign is prejudicial to the name and reputation of the City of Paris and is likely to prevent or restrict the use of its name to distribute or promote goods covered by the contested application or the use of the Paris « hashtag » in order to communicate about events the city supports regarding those goods. The Court also pointed out that the registration of the contested sign was detrimental to the interests of Parisian economic operators who are active in the same sectors and would like to use the « #PARIS » sign in order to communicate on social networks.

Consequently, the Paris Court of Appeal decided that the application for the registration of the trade mark (above) should be fully rejected.

This is the first decision where the Paris Court of Appeal had to decide a case where an opposition had been filed by a local authority on the ground of new Article L 712-4 3° of the French Intellectual Property code.

Case Ref. Paris court of appeal, 26 June 2018, No. 17/06317