Mrs. Fucks, Director of legal affairs of the famous Institute INAO, kindly accepted to answer to our questions.
1) What is the INAO?
The acronym INAO is meant for National Institute of Appellations of Origin. The INAO is a public entity which is place under dependence of the Ministry of Agriculture. In 2006 the INAO has seen its regular missions enlarged by being empowered to handle the red label and biological agriculture aspects.
On this occasion, the previous name National Institute of Appellations of Origin was changed into National Institute of Quality and Origin but the well-known abbreviation INAO has been kept for easier convenience and for facilitating the communication with the Institute.
2) What are the missions of INAO?
Upstream, the INAO is in change of drafting and interpreting the law concerning origin and quality signs and drafting, with concerned professionals, the provisions and official texts which define the production process of labelled goods under any appellation of origin. During the life of the origin and quality
signs, the INAO controls the application of specification relating thereto, defends the signs against third parties and regularly and systematically, communicate on the promotion of origin and quality signs in France and abroad.
3) How are applied the INAO mission daily?
INAO assists organisms which are specifically devoted to a particular appellation of origin (like the CIVC for the Champagne) or independent organisms registered by the INAO which aim to respect; preserve and defend the appellation.
4) What are the general defence means used by INAO?
The INAO regularly watch French and Community trademarks, sends to the French Trademarks Office observations against trademark applications reproducing or adopting a sign confusingly similar with appellations of origin and bring legal actions to the Courts either jointly with organisms devoted to a specific appellation or as the only acting party especially if financial means of said organism are limited.
5) What are the defence means implemented abroad?
INAO first uses the international protection of the TRIPS. Its effects are however limited considering that the members are free to transpose the provisions relating thereto and to create a sui generis law. The INAO faces disparate situations. Many countries recognize a full protection to appellations of origin whereas some other only grant a simple deception towards third parties and some other organise derogations for previous trademarks over appellations of origin. The INAO concludes bilateral agreements with two or more countries such as the one concerning the appellation of origin for Champagne which was concluded with the United States.
Finally, the INAO performs an important work of sensitization in order to put in place abroad a system of protection inspired by the French system but which is not necessarily and systematically a pure copy of our system because the cultural specificities of each concerned countries must also be taken into account.
6) What case law decision first comes to your mind when looking back over the last years?
The matter that first comes to my mind relates to Pernod Ricard trademarks for CHAMPOMY and its declension (CHAMPOMY BOISSON DE LA FETE, CHAMPOMY MAGIC SHOWN, CHAMPOMY FUNNE ROSE…) for a new drink made with grape in class 32.
Beyond the trademarks themselves, the communication and advertising policy of the applicant evolved by using multiple references to the Champagne universe over the years.
After several and vain amicable settlement attempts, the INAO and the organism devoted to the protection of the appellation of origin for Champagne lodged an action based on the infringement of said appellation and requested the cancellation of the other side’s trademarks. The Paris Court of First Instance decided in particular that the tolerance was not applicable to Appellations of Origin and retained no likelihood of confusion between the signs. The judge classically but wrongly made a visual, phonetic and intellectual comparison of the signs instead of taking into account of the notoriety of the Champagne appellation of origin and its infringement by the other side’s trademarks. Recourse had been filed against this decision and the proceeding is still pending before the Court of Appeal.