The right to toponym: a regulated framework for wine producers
The right to toponym, also referred to as the ‘tenement privilege,’ grants vineyard estate owners the ability to use the name of the location where their vines are cultivated for their wine operations or to register it as a trademark for their wine. This right is derived from French intellectual property law and constitutes an important exception to general trademark principles.
To determine the relevant location, reference must be made to the cadastral plan, which provides the official designation of the land parcel. This geographical precision is essential to establish the legitimacy of the use of the toponym and to prevent any misleading information to consumers regarding the origin of the wine.
Tenement privilege: conditions and requirements
Article L.711-3(c) of the French Intellectual Property Code provides that no sign which is liable to mislead the public, in particular as to the nature, quality, or geographical origin of goods or services, may be adopted as a trademark or as an element of a trademark. This provision constitutes a cornerstone of consumer protection in trademark law.
A trademark consisting a toponym designating wine is liable to mislead the public as to the origin of the product if it does not meet the following two cumulative conditions:
First condition: The vineyard parcels whose name is given to the wine must correspond to a significant area of the agricultural holding. This criterion is freely assessed by the courts, but case law generally considers that it should correspond to at least one-third of the land cultivated as vineyards. This requirement ensures that the toponym genuinely reflects a substantial part of the estate’s wine-growing activity and is not merely a marketing reference based on a negligible parcel.
Second condition: The production from this parcel must be subject to separate vinification. The trademark applicant wishing to use a toponymic name must prove that the vinification of grapes from these parcels is carried out separately from wine produced from the ramainder of the holding. In practice, the winegrower must implement reliable procedures in order to justify this separate vinification, which may include maintaining detailed records to harvesting, fermentation, ageing, and bottling processes specific to the designated parcel.
This measure aims to prevent any confusion among the public as to the actual origin of the product and thus to ensure that the trademark is not deceptive, in accordance with the provisions of the French Intellectual Property Code. The requirement of separate vinification guarantees that consumers purchasing a wine bearing a specific toponym are indeed acquiring a product that reflects the unique characteristics of that particular terroir.
Additional requirements in the presence of a prior Trademark
When there is a prior trademark, an additional condition is required. While case law recognises that the right to toponym can be exercised in relation to a prior trademark, this is subject to the addition of a prefix or suffix with sufficient distinctive character to the sign to avoid any risk of confusion. This requirement reflects a delicate balance between the legitimate right of landowners to identify their products by geographical origin and the protection of earlier trademark rights.
The distinctive element added to the toponym must be sufficiently distinctive to enable consumers to clearly distinguish between the two sources of goods. A simple article, generic term, or minimal alteration would typically be insufficient to satisfy this requirement. The courts assess this on a case-by-case basis, taking into account, the overall impression produced by the combined sign and the likelihood of confusion among the relevant public.
Balancing between Toponym rights with appellations of origin
The French Intellectual Property Code provides that a trademark which infringes prior rightsin particular a registered geographical indication,’ may not be validly registered. Among geographical indications, an appellation of origin is defined as the denomination of a country, region, or locality used to designate a product originating therefrom, whose quality or characteristics are due to the geographical environment, including natural and human factors, as provided for in Article L.115-1 of the Consumer Code.
The granting of PDO (Protected Designation of Origin) or AOC (Appellation d’Origine Contrôlée) status is subject to rigorous procedures and specifications setting out the criteria to be met to benefit from this designation. These specifications typically cover aspects such as grape varieties, viticultural practices, maximum yields, vinification methods, and aging requirements. It is not possible to register an appellation of origin, wether alone or with non-distinctive elements, as a trademark, even to designate products that would be entitled to it. This indication must not be subject to private appropriation by a specific user to the detriment of others who may equally be entitled to rely on it.
Thus, since the controlled appellation of origin is not capable to appropriation, a vineyard estate owner wishing to benefit from the tenement privilege must ensure that the filing of its trademark does not conflict with a PDO. For products that benefiting from an appellation of origin, it is possible to add the name of an estate to the appellation within a composite trademark, provided this is permitted by the specifications. This allows producers to develop their brand identity while respecting the collective nature of geographical indications.
The DE BAECQUE BELLEC firm assists its clients by combining expertise in trademark law in Paris with informed advice on the exploitation of products benefiting from an appellation of origin, while ensuring compliance with both intellectual property and agricultural regulations.
Stéphane Bellec, Partner
Intellectual Property Attorney
Email: sbellec@debaecque-avocats.com
Tel: +33 (0) 1 53 29 90 00