Protected Geographical Indications: a challenge for SYRELI

Their .fr domain names raise legal challenges that it is now possible to take on. Afnic has already had occasion to address this matter, by shining a light on the recognition of the protection of a controlled designation of origin (AOC)* (in accordance with Article L45-2 of the French Post and Electronic Communications Code (CPCE). Today SYRELI, Afnic’s alternative dispute resolution procedure, looks at the transposition of this reasoning to a Protected Geographical Indication (PGI) for craft and industrial products.

On 16 October 2023, the Association for the “Porcelaine de Limoges” Geographical Indication (the applicant) filed a request with SYRELI for the transfer to it of the domain name <porcelainefrancaisedelimoges.fr>.

The disputed domain name was registered by a natural person on 24 February 2017, three months before the applicant filed an application with the National Industrial Property Institute (INPI) for approval of PGI status for “Porcelaine de Limoges” (Limoges Porcelain) craft and industrial products.

The SYRELI college therefore looked into the possibility of invoking the rights attaching to a PGI for craft and industrial products by virtue of the provisions of the CPCE in respect of a domain name registered prior to the official recognition of this PGI by the INPI.

Development of the legal framework

In the context of this case, it is essential to revisit the notion of Protected Geographical Indication for craft and industrial products. This new legal notion, introduced into French law by the Hamon act of 17 March 2014, extends the geographical indications regime well beyond wine, agri-food products and spirits, to various craft and industrial products, even including Basque linen and Alsatian pottery.

According to reports published by the INPI, some fifteen PGIs for craft and industrial products have been approved since 2016, thus demonstrating the slow emergence of this right in the legal sphere (https://base-indications-geographiques.inpi.fr/fr/toutes-les-ig).

Apart from this, on 27 October 2023 the European Union adopted Regulation 2023/2411 on the protection of geographical indications for craft and industrial products, in which country-code top-level domain name (such as .fr) registries are required to ensure that any alternative dispute resolution procedures for domain names also cover registered geographical indications.

Recognition by SYRELI of rights of geographical indications for craft and industrial products

In the dispute relating to the “porcelainefrancaisedelimoges.fr” domain name, the SYRELI college first acknowledged the standing of the applicant, the Association for the “Porcelaine de Limoges” Geographical Indication, an entity registered in the National Register of Associations (RNA) since 3 June 2014 and responsible for the defence and management of the “Porcelaine de Limoges” PGI for craft and industrial products since 14 November 2017.

Next, taking Article 721-2 of the Intellectual Property Code as its basis,

the SYRELI college aligned its reasoning with case law and prior decisions, to establish that geographical indications for craft and industrial products could enjoy protection from violation providing the Applicant could show:

– Rights of defence and management of the PGI for craft and industrial products,

– The similarity between the domain name and the PGI for craft and industrial products,

– Private use by the Holder of the domain name, depriving the beneficiaries of the PGI for craft and industrial products of legitimate use and/or likely to distort or weaken the standing or reputation of the geographical indications for craft and industrial products.

In this case, the SYRELI college considered that the first two conditions were perfectly met since:

• On the one hand, the decision of 14 November 2017 handed down by the Director General of the INPI acknowledges that the Association of the “Porcelaine de Limoges” Geographical Indication is the entity charged with the defence and management of geographical indication INPI 17-02 “Porcelaine de Limoges”;

• On the other hand, the domain name <porcelainefrancaisedelimoges.fr> is similar to the PGI “Porcelaine de Limoges”, given that both are formed by the terms “porcelaine” and “de Limoges”, associated with the geographical term “française”, indicating the territory in which the applicant carries on its business.

As regards the holder’s use of the disputed domain name, the applicant has presented numerous documents attesting to the well-established reputation of the “Porcelaine de Limoges” PGI long before the <porcelainefrancaisedelimoges.fr> domain name was registered.

It advances the view that the protection of “Porcelaine de Limoges” as a PGI for craft and industrial products derives from a process of recognition initiated with the draft law of 1 June 2011 strengthening consumers’ rights, protection and information. This approach was consolidated by key events including the creation of the Association for the “Porcelaine de Limoges” Geographical Indication on 3 June 2014 and by numerous media announcements spread over several years.

Besides, the Holder’s registering the domain name on 24 February 2017, three months before the application for approval of the PGI for craft and industrial products, raises questions as to the good faith of that action, given how close together in time these two events were.

As well as demonstrating how well known Limoges porcelain was before the registration of the domain name, the Applicant also proved that the use of the domain name distorted and weakened the standing and reputation of its PGI for craft and industrial products.

This decision confirms SYRELI’s competence in handling disputes involving registration and the abuse of domain names with geographical indications. Following recognition of the right of an AOC in 2017 in respect of the domain name muscadet.fr, SYRELI demonstrates in this new ruling that the rights of a PGI for craft and industrial products can also be invoked by virtue of the legal provisions and also allows the Association for the “Porcelaine de Limoges” Geographical Indication to demonstrate the reputation and value of its PGI for craft and industrial products.