The coexistence of a PGI and an earlier trademark is subject to good faith

Lyon Court of Justice, April 5th 2022, RG n°1/11459

This case involves a dispute between a PGI and an earlier trademark. Under Article 14(2) of Regulation No. 1151/2012, the coexistence of a PGI and an earlier trademark presupposes the good faith of the trademark owner at the time of filing.

In this case, a company registered the semi-figurative mark “Louis Auvergne” in 1988. Believing that this mark evoked the PGI “Auvergne sausage / Auvergne dry sausage“, effective since 2016, the INAO and the “Consortium des Salaisons d’Auvergne” (CSA) sued this company.

The Court granted the requests of the CSA and the INAO. It condemned the company for infringement and cancelled the trademark for fraudulent registration with respect to products similar to those of the PGI.

To characterize bad faith, the Court based itself on the fact that the process of recognition of the PGI was already underway when the earlier trademark was filed, and, since the company was initially part of the group at the origin of the PGI, it was perfectly aware of it.

Thus, this classic judgment reminds us that the coexistence of a prior trademark and a PGI is subject to good faith. A trademark filed before the recognition of a PGI, with the sole purpose of trying to avoid the future impossibility of evoking the PGI for products that do not comply with the specifications, must be cancelled for fraudulent filing.