Industrial Property Law

 The EUIPO's Guidelines for Examination of the European Union Trademark define public policy as the set of legal rules necessary for the functioning of a democratic society and the rule of law. Article L. 711-3, b) of the Intellectual Property Code, in its version prior to the Ordinance of 13 November 2019, added to it as a ground for invalidity the contravention of trademarks to “good morals” (bo …

Mark contrary to public policy and accepted principles of morality

 The EUIPO's Guidelines for Examination of the European Union Trademark define public policy as the set of legal rules necessary for the functioning of a democratic society and the rule of law. Article L. 711-3, b) of the Intellectual Property Code, in its version prior to the Ordinance of 13 November 2019, added to it as a ground for invalidity the contravention of trademarks to “good morals” (bonne mœurs). The notion of “good morals” no longer appears in Article L. 711-2, 7° of the Intellectual Property Code, presumably by oversight because the directive of 16 December 2015 refers to it as a ground for invalidity ( described as “accepted principles of morality"). Good morals refer to more subjective values that than public policy, such as the refusal to register subversive, obscene or even racist, discriminatory, or insulting signs . The trademark "Puta madre”, which contravenes the rules of social morality, is contrary to accepted principles of morality . The INPI found that the applications for registration of the slogans “Je suis Paris” and “Pray for Paris” were contrary to public policy: because of their use and perception by the community following the November 2015 terrorist attacks in Paris, these terms could not be appropriated by an economic operator .

The evaluation of the conformity of a trademark with public policy or morality is carried out at the time of filing, with regard to the goods and services designated in the application for registration . The nature of the goods or services in question cannot, in itself, be an obstacle to the registration of a trademark ( Article 7 Paris Convention and Article 15(4 )TRIPS) . However, the registration of a trademark may be refused if its use, by offering, delivering or distributing the registered good or service, contravenes public policy . A trademark that includes a term designating a tobacco product, although valid, cannot be registered to designate leather goods, since the law prohibits the marketing and distribution of objects of common use or consumption if they bear the trademark of a tobacco product (Article L. 3512-4 of the Public Health Code). However, in order to prevent registration, the activity in question must be of such a nature as to affect the validity of the mark, which is not the case for the advertising of an erotic film guide .

A mark which creates a likelihood of confusion with an existing official service is contrary to public policy. It is up to the trial courts to determine, by virtue of their sovereign power of appreciation, whether or not there is a likelihood of confusion , taking into account the particular circumstances of the case, which establish that the name is of such a nature as to lead the public to believe that the product or service emanates from an official body or from a department controlled or authorized by the public or administrative authorities . The terms “Régie-France”, to designate printing products or courier services and newspaper distribution  or “Ecole de conduite française” on a blue, white and red stripe, to designate a driving school  are likely to deceive the public. The marks “Eurolivret”, “Eurosouscription”, “Eurocotation”, “Eurocontrat” and “Europortefeuille” to designate, among other things, services rendered in the financial, monetary and real estate sectors are deceptive and liable to mislead the public in that they imply that they emanate from an official European body guaranteeing the quality, origin and oversight of the products or services provided . On the other hand, the trademark “Europresse” registered in particular for newspapers, publications, advertising and communication services, is not likely to mislead the public, as the use of the prefix “Euro”, which is merely evocative, can be analyzed as a desire to show that one belongs to Europe .

The adoption, as a trademark, of a title belonging to a regulated profession by the public authority without being the owner, is contrary to public policy. The mark “Notaire 37”  (for a notary) was registered by the undertaking Notariat services in violation of the rights of the Regional Council . On the other hand, a mark consisting of a legal term designating a regulated activity is not necessarily contrary to public policy. The collective mark “Crédit Mutuel”, even if it describes a particular mode of exercising the banking activity regulated by the Monetary and Financial Code, could be validly registered by the Confédération Nationale du Crédit Mutuel (CNCM), the body responsible for the control, inspection and representation of the Crédit Mutuel network before the public authorities .

The glorification of illegal drugs or the promotion of their consumption is a ground for invalidity of a trademark for breach of public policy. The sign “Cannabia”, which evokes cannabis, cannot be used to designate food products, as the public will inevitably see it as legitimizing the use of that drug .

Guidelines for the Examination of European Union Trade Marks, European Union Intellectual Property Office (EUIPO).

Cass. civ., 29 March 2011, LawLex202100006280JBJ.

Cass. com, 28 June 1976,  LawLex202100006279JBJ.

CA Paris, 8 April 1993, LawLex202200000182JBJ.

Cass. com. 16 April 2013, LawLex202100006462JBJ; Cass. com. 16 December 2014, LawLex202100006215JBJ. 

Cass. com. 14 October 2020, LawLex202100006163JBJ. 

CA Paris, 18 October 2000, LawLex202100006336JBJ.

INPI Press release, 20 November 2015, “Trademarks Pray For Paris or Je Suis Paris”.

CA Paris, 19 October 2005, LawLex202200001338JBJ.

CA Paris, 19 October 2005, LawLex202200001338JBJ: if the sites operated on the Internet accessible at the addresses “www.desirsexe.com” and “www.desir-sexe.com” have an erotic or even pornographic character, the sign Désir Sexe is not, in itself, immoral and contrary to the principles of morality .

CA Paris, 5 March 1990, LawLex202100006475JBJ. 

CA Paris, 17 October 1995, LawLex202200000953JBJ, the activity of publication of a guide of erotic films, not prohibited but simply regulated, is not of a nature to affect the validity of the mark “Vidéo X le magazine du film X ”.

Cass. com. 28 June 1976, LawLex202100006279JBJ.

Cass. com. 16 June 1980, LawLex202200001191JBJ, the Court of Appeal which, in order to confirm the INPI's rejection of the registration of the trademark “France-golf”, holds that the word “France” placed before the word “golf” constitutes an indication capable of misleading the public into believing that it is an official service, or at least a service controlled or authorized by the national public authority, did not not provide a legal basis for its judgment, and should have examined the particular circumstances of the case establishing that the name France-golf was likely to mislead the public; CA Paris, 15 March 1988, LawLex202100006335JBJ. 

CA Paris, 15 March 1988, LawLex202100006335JBJ. 

Industrial Property Law

52. Mark contrary to public policy and accepted principles of morality

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52. Mark contrary to public policy and accepted principles of morality

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Les décisions de justice citées dans ce paragraphe :

Les notions juridiques connexes

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