INTA Files Amicus Brief in France.com Case before French Civil Supreme Court

* The following blog post is by Thierry Calame (Lenz & Staehelin, Switzerland)   of the International Amicus  Committee-Europe Amicus Subcommittee. – GM

INTA filed an amicus brief on February 28 with the French Civil Supreme Court in a case between Sté France.com Inc., a U.S. company, and the France Tourism Development Agency, GIE Atout France, together with the French State.  

The case involves an appeal from the Paris Court of Appeal, which declared France.com Inc.’s French and EU trademarks comprising the term “France.com” invalid. The court held that the sign “France” embodies the economic, geographic, historical, political, and cultural identity of the French State, and that the French State has a senior right to this sign, comparable to the family name (patronym) of a natural person.  

The court implicitly applied article L. 711-4 (g) of the French Intellectual Property Code, which provides that “signs may not be adopted as trademarks where they infringe earlier rights in, inter alia, . . . g) the personality rights of a third party, including his or her patronym, pseudonym or image.”

In its amicus brief, INTA argues that the Paris Court of Appeal misconstrued French law and reiterates its position that states do not possess exclusive rights to geographic terms, which are registrable as trademarks.  

More specifically, INTA disagrees with the court’s suggestion that the name of a country could be likened to the family name of a natural person. The Association notes that Article L. 711-4 (g) only protects the family name of a human being and, thus, does not apply to “persons” other than natural persons. INTA also relied on the legislative history and the purpose of article L. 711-4 (g) to support this interpretation.  

The sign “France” above all identifies a geographical territory, which is fundamentally different from the surname of a specific natural person. While individuals need to be protected from having their name usurped by third parties, geographic terms are commonly used. Indeed, INTA found more than 10,000 French and EU trademark filings that include the word “France.” In addition, INTA emphasizes that Article 6ter of the Paris Convention does not prohibit the registration of names of states or countries as trademarks or elements of trademarks.    

Although, as with most courts in Europe, the French Civil Supreme Court does not allow direct filing of amicus briefs, INTA was successful in intervening through the party whose position it supported, France.com Inc., which submitted the brief in the pending proceedings.  

The brief was prepared by a working group within the   Europe Amicus Subcommittee of the International Amicus Committee, composed of Emmanuel Larere (Gide Loyrette Nouel, France), Marina Perraki (Tsibanoulis & Partners Law Firm, Greece), Laetitia Lagarde (Baker & McKenzie, United Kingdom), and Thierry Calame (Lenz & Staehelin, Switzerland).