Geographical indications (GIs) protect the name of a product originating from a specific geographical area and which owes its qualities or reputation to its origin. It is common for trademarks to include terms that are identical or evocative of a GI or, conversely, for a GI to include terms found in earlier trademarks, which can give rise to conflicts.
In the event of a trademark subsequent to a GI, and on the basis of absolute grounds, offices, in particular the NIIP in France, may reject this trademark if it consists notably of a GI or elements evoking such denomination*. Furthermore, any person or entity authorized to exercise the rights deriving from a GI may, in the 4 types of infringements indicated below, oppose against the registration or request the invalidity of a later trademark that infringes on that GI, whether or not that trademark refers to products benefiting from a GI**:
- Any direct or indirect commercial use of the GI in respect of products comparable or where use of that GI for any product damages its reputation (e.g., the NIIP considered that the reputation of the GI BLEU D’AUVERGNE was likely to be trivialized by the use of the trademark BLEU D’AUVERGNE for clothing items, thereby diluting the exclusive link that the verbal element has with cheese, Syndicat Interprofessionnel Régional du Bleu d’Auvergne (S.I.R.B.A.) and INAO v. Mr. S O, INPI, Opposition, decision no. OP 24-4183, 12/06/2024),
- Any misuse, imitation or evocation of the GI (e.g., the NIIP ruled that the trademark COGNAPEA registered for “Spirits benefiting from the geographical indication ‘Cognac” evokes the GI COGNAC, INAO/BNIC v. COGNAPEA, INPI, Opposition, decision OP 22-0433, August 26, 2022 – the NIIP ruled that the trademark SAINT EMILLIARD for “Bottles; porcelain, ceramic, earthenware or glass art objects; Alcoholic beverages (except beers and wines)” evokes the GI SAINT-EMILLION, Conseil des Vins de Saint-Emillion v. D.A., INPI, Nullity, NL 23-0090, 10/22/2023),
- Any other false or misleading indication as to qualities of the product (e.g., the EUTR held that the trademark NERO CHAMPAGNE for wines with the protected designation of origin “Champagne” could be perceived by part of the relevant public as conveying a false or misleading indication, EU Court, June 25, 2025, T‑239/23, EU:T:2025:638, Comité interprofessionnel du vin de Champagne et Institut national de l’origine et de la qualité (INAO) v EUIPO – Nero Lifestyle Srl) and
- Any other use of the IG liable to mislead the consumer as to the true origin of the product.
In the case of a trademark that predates a GI, coexistence is, in principle, the rule, in accordance with the theory of acquired rights. The EU Regulation 2023/2411 also provides in Article 44 that “a trade mark, the use of which is contrary to Article 40 of this Regulation (4 types of infringements abovementioned), which has been applied for, registered, or established by use in good faith within the Union, if that possibility is provided for by the applicable law, before the date on which the application for registration of the geographical indication is submitted to the Office, may continue to be used and renewed notwithstanding the registration of the geographical indication, provided that no grounds for invalidity or revocation of the trade mark exist (…). In such cases, the use of the geographical indication and of the relevant trade mark shall be permitted”. The EU Regulation 2024/1143 contains a similar provision in Article 31.
Good faith is a determining factor, the absence of which renders the earlier trademark invalid, as in the two following examples:
- LE MACONNAIS and CHAROLAIS / LE MACONNAIS DES GOURMETS and LE CHAROLLAIS DES GOURMETS, TGI Lyon, 3rd chamber, cab. 03 c, August 2, 2017, No. 14/10285, SYNDICAT DE DÉFENSE DU FROMAGE CHAROLAIS, SYNDICAT DE DÉFENSE DU FROMAGE MACONNAIS – INAO v. S.A.R.L. JB – S.A.R.L. JZ:
In this case, the court ruled that “It is clear from these numerous documents that the AOC recognition project was initiated well before the disputed trademarks were filed on June 27, 2003, and that the various stages of its recognition were widely publicized, both in the press and by specialized actors.” It was therefore impossible for the owners of the earlier trademarks not to have been aware of this project. Consequently, “This filing can only be explained by the desire to circumvent the future but certain impossibility of using them for products that would not meet the criteria of the future AOC, by arranging for protection that would give them a monopoly on signs composed in particular of the terms ‘Mâconnais’ and ‘Charolais.” (automatic translation). The application was recognized as fraudulent and the trademarks at stake were canceled.
- SAUCISSON SEC D’AUVERGNE and SAUCISSE SECHE D’AUVERGNE / LOUIS AUVERGNE, INAO – CONSORTIUM DES SALAISONS D’AUVERGNE v. S.A.S. ETABLISSEMENT PHILIS – S.A.S. SALAISONS PHILIS, TJ Lyon, 3rd ch. Cab 03 c, April 5, 2022, No. 18/11459
“The process of recognizing the PGI ”Saucisson sec d’Auvergne/Saucisse sèche d’Auvergne“ was initiated well before filing of the semi-figurative trademark ”Louis Auvergne“ no. 98737090 on June 10, 1998 by Etablissements Philis, which was fully aware of this recognition process in which it was participating.” Therefore, “It thus appears that in 1998, Etablissements Philis, which was fully aware of the initiation of a PGI recognition procedure, proceeded to file a trademark including the term ‘Auvergne’ and specifically targeting ‘saucissons’, which constitutes a fraudulent filing (…).” “It is therefore established (…) that Etablissements Philis proceeded to register a trademark consisting of an essential term of the PGI, despite the initiation of the procedure for its recognition, with the sole aim of establishing a private right enforceable against third parties and allowing the use of the sign “Auvergne” in association with sausages whose manufacture did not comply with the strict rules of the PGI.” (automatic translation). The trademark in question was therefore canceled for products considered identical or similar to those covered by the GI.
If the coexistence between an earlier trademark and a later GI is intended to take into account the acquired rights of the owner with good faith of the earlier trademark, caution is nevertheless required in the use of that trademark. The owner must take care, particularly in its communications, to avoid any behavior/message/visuals, etc. that could lead consumers to believe that there is a link between its trademark and the GI. Indeed, in such a situation, the validity of the earlier trademark, even if filed in good faith, could be challenged on the grounds of deception (revocation action).
The recognition of the acquired rights of the owner of the earlier trademark in relation to a later GI requires caution in the use of the trademark.
Lavoix remains at your disposal for any further information on this subject.
*Article L. 711-2, 9° of the intellectual property Code
**Article 26 of the EU Regulation 2024/1143 of 11 April 2024 on GI for wine, spirit drinks and agricultural products, as well as traditional specialities guaranteed and optional quality terms for agricultural products and Article 40 of the EU Regulation 2023/2411 of 18 October 2023 on the protection of geographical indications for craft and industrial products – This regulation, which came into force on December 1, 2025, means that national GI protection systems for artisanal and industrial products will cease to exist on December 2, 2026.