If you are going to attack a competing brand before the INPI, make sure that your own brand is beyond reproach.
Summary
A good understanding of both opposition and invalidity procedures before industrial property offices, as well as the law on indications of geographical source, is essential to defend trademarks relating to geographical names, in particular in the field of agri-food.
In more detail
Les Fermiers Landais, a company established and well known in the South-West, has been operating as a brand and using a geographical name corresponding to a coastal territory of the Landes department, Le Marensin, for more than two decades.
Les Fermiers Landais has owned the trademark “Le marensin”, registered at the INPI since 1997, to designate poultry meat.
Les Fermiers Landais realized that a company had registered a trademark “La Table du Marensin” to designate identical and similar products.
They therefore opposed the registration of this mark before the INPI and the adverse party replied by filing a request for nullity of the opposing mark, on the grounds that “Le marensin” would describe the geographical origin of poultry meat, and therefore would be insusceptible to private appropriation as a trademark.
In this action for nullity, the adversary of Les Fermiers du Sud-Ouest produced numerous publications on the Internet attesting to the existence of the Marensin territory and the presence of numerous poultry farms in the Landes department, including in the territory of Marensin.
Since the recent reform of trademark law, it is possible to request the invalidity of a trademark before the INPI, whereas previously it was necessary to initiate an action before the courts which proved to be longer and more expensive.
Consequently, the risk for trademark owners of seeing their trademarks challenged, following an opposition procedure, has increased significantly.
In the case of our client, this nullity action, beyond the failure of the opposition brought against the competing brand “La Table du Marensin”, raised the very question of the validity of a brand that it operated for two decades.
Problem
The problem posed by this case was the difficulty of defending a trademark composed of a geographical term that may have a link with the products it designates.
This difficulty was exacerbated by the fact that the Marensin area belongs to the Landes department, which benefits from it’s reputation for poultry meat, reflected in the existence of the protected geographical indication (PGI) “Volailles des Landes”.
The risk of confusion between trademark law and the law on indications of geographical origin was obvious in this case.
Solution
The solution lay in Fermiers du Sud-Ouest’s ability to challenge their opponent’s argument by demonstrating that their mark ‘Le Marensin’, although composed of a geographical term, does not evoke the geographical origin of poultry meat for consumers, and can therefore fulfil its function of identifying Fermiers du Sud-Ouest, the company that owns the mark.
In order to do this, it was essential to demonstrate the absence of reputation of the Marensin area for poultry meat and to separate it from the PGI ‘Volailles des Landes’, even though this area is located in the Landes department.
The valued added from JUNCA & ASSOCIÉS
JUNCA & ASSOCIÉS is composed, on the one hand, of lawyers specializing in intellectual property who master consumer law, which is related to trademark law, and, on the other hand, of industrial property attorneys who are experienced in litigation in the opposition and invalidity of trademarks before the INPI.
JUNCA & ASSOCIÉS therefore has a global vision of trademark law and the law of indications of source, which allows it to handle these two matters in trademark litigation, the solution of which lies precisely in their combination.
Result
The INPI rejected the action for nullity brought against the “Le marensin” trademark, considering that JUNCA & ASSOCIÉS had demonstrated that “the relevant consumer was not able to establish a sufficiently direct connection between the products covered and the sign ‘Le marensin’, and to perceive therein immediately and without further reflection a description of an objective and expected characteristic of these products, namely their geographical origin”.