On the 12th of December 2023, the SYRELI panel of AFNIC granted the transfer of the domain name porcelainefrancaisedelimoges.fr to the Association for the geographical indication “Porcelaine de Limoges”, represented by LLF Avocats (SYRELI FR-2023-03612 porcelainefrancaisedelimoges.fr : afnic.fr / PDF).
This decision is interesting on two aspects.
It reminds us that the SYRELI and PARL EXPERT procedures, available for TLDs managed by the French registry AFNIC (.fr, .re, .pm, .yt, .tf and .wf), allow the complainant to invoke a wider array of rights compared to their UDRP “cousin”.
Indeed, while the latter only allows complaints based on trademark rights, a SYRELI or PARL EXPERT complaint may be based, notably, on the infringement of “rights guaranteed by the French constitution or by the law” (Article L45-2-1 of the French Code des Postes et des communications électroniques or “CPCE”) or “pre-existing intellectual property or personality rights” (Article L45-2-2 CPCE).
The complaints based on Alinea 2 form the overwhelming majority of cases handled by the SYRELI (77% of SYRELI complaints and 100% of PARL EXPERT complaints according to AFNIC: afnic.fr). Nevertheless, these figures must not divert our attention from the possibility offered by the CPCE and its article L45-2 alinea 1 to base a SYRELI or PARL EXPERT complaint on other rights such as those attached to protected geographical indications.
In this particular case, the SYRELI complaint was based on the geographical indication protecting industrial and artisanal goods (IG PIA) “Porcelaine de Limoges”. It is, to our knowledge, the first SYRELI decision involving this kind of Indication, which exists since the law n° 2014-344 of 17th of March 2014. French IG PIA are approved by the French intellectual property office whose website displays an up-to-date list (inpi.fr).
This brings us to the second interesting aspect of the SYRELI decision on porcelainefrancaisedelimoges.fr. Indeed, the IG PIA “Porcelaine de Limoges” was approved on the 1st December of 2017 while the domain name porcelainefrancaisedelimoges.fr had been registered since the 24th of February 2017: 9 months before the IG PIA approval and 3 months before its filing.
The complainant managed to demonstrate, with documented arguments, that the notoriety of the indication “Porcelaine de Limoges” vastly predated its formal approval by INPI.
The cases in which the SYRELI college accepts to consider an infringement when the disputed domain name registration predates the rights invoked by the Complainant remain quite rare. The decisions FR 2021-02272 eat.fr (PDF], FR-2021-02368 cbdoo.fr (PDF) et FR-2021-02378 gomesse.fr (PDF) are examples of such cases.
Due to the very nature of the IG PIA, a formal approval often comes after the sign gained notoriety among the public (Laguiole knives and Charentaises from Charente-Perigord are relevant examples). In these circumstances, additional litigations opposing IG PIA to prior domain name registrations are likely to arise in the following months or years.
In a recent ruling from the 15th of November 2023, the Cour de Cassation rejected the pourvoi (appeal) of the French Association for Artisanal and industrial Geographical Indications (AFIGIA) against the ruling of the court of appeal of Bordeaux, which validated the approval of an IG PIA despite the absence of a pre-existing use. The Cour de Cassation ruled that « les produits industriels et artisanaux peuvent bénéficier d’une protection de l’indication géographique de la zone dont ils sont originaires […] sans qu’il soit nécessaire que soit établie la préexistence d’une appellation spécifique de ce produit » (Cass. Com., 15 nov. 2023, No. 2023, 22-12.858 : legifrance.gouv.fr). Translation: industrial and artisanal goods may benefit from the protection granted by the IG PIA even in the absence of a pre-existing use of a specific name for the concerned good.
While the prior use of an indication does not seem to be required by the law for an IG PIA approval, the SYRELI decision on porcelainefrancaisedelimoges.fr demonstrates the usefulness of such prior use, and the reputation that comes with it, when the IG PIA must be defended against third parties.
The IP TWINS teams are available to help with your extra-judicial procedures involving domain names such as UDRP, SYRELI, PARL EXPERT and others.
