Association Name and Intellectual Property: When Is a Name Protectable?

Imagine: you are the president of an animal protection association in Fécamp, established over a hundred years ago. One day, you discover that a new association in Dieppe uses a nearly identical name. You sue them for infringement. But the court dismisses your claim, ruling that your name lacks originality. Frustrating, isn't it? That is exactly what happened in the case decided by the Court of Cassation on 7 October 1981.

This decision raises a crucial question for any association: is its name legally protectable? The answer is not automatic. The name must be original, meaning it is not merely descriptive or generic. In short, "Société protectrice des animaux de Lyon" is not creative enough to prevent others from using it.

In this article, we will dissect this decision and see what it implies for associations, as well as for owners and tenants who might face naming disputes. You will see that intellectual property law (the rights that protect creations of the mind) is not reserved for large companies.

The facts: a story that happens every day

The case began in Lyon, but it could just as easily have taken place in Rouen, Fécamp or Dieppe. An association, the "Société protectrice des animaux de Lyon" (SPAL), was established in the 19th century. Its name had been used for over a hundred years. One day, another association was created: the "Société protectrice des animaux et des oiseaux utiles à l'agriculture de Lyon et du Sud-Est". SPAL considered this name too close to its own and likely to cause confusion in the public mind. It sued the new association for trade mark infringement (unauthorised use of a protected sign) and unfair competition (wrongful acts harming a competitor).

The Lyon Court of Appeal, at first instance, dismissed SPAL's claim. The judges held that the name "Société protectrice des animaux de Lyon" lacked originality. In other words, it was not sufficiently distinctive to be appropriated by a single association. SPAL then appealed to the Court of Cassation (a remedy before the Court of Cassation to annul a judgment contrary to law).

The Court of Cassation, in its judgment of 7 October 1981, affirmed the Court of Appeal's decision. It considered that the lower court had sovereignly (definitively and without review by the Court of Cassation) found the name to lack originality. The Court added that SPAL could not rely on its use of the name for over a century to oppose use by another association, because such tolerance of use was not justified by practical necessity.

The court's reasoning — dissected

To understand this decision, we must refer to intellectual property law, and more specifically Article L. 711-2 of the Intellectual Property Code (which defines the conditions for a valid trade mark). According to this text, a sign must be distinctive to be protectable. Distinctiveness is the ability of a sign to identify the origin of a product or service. For example, the name "Apple" for computers is distinctive because it has no relation to the product. In contrast, "Société protectrice des animaux de Lyon" is purely descriptive: it merely describes the object and location of the association. It is therefore not capable of being reserved for a single entity.

The Court of Appeal had found that SPAL's name was "devoid of the originality necessary to allow its private appropriation". In other words, a name that is too generic cannot be a valid trade mark. The Court of Cassation endorsed this reasoning, recalling that the assessment of originality is within the sovereign power of the lower courts. In other words, even if you have used a name for a hundred years, if that name is not original, you cannot prevent someone else from using it.

However, this decision does not mean that an association can never protect its name. If the name is original (e.g., an invented acronym or a fanciful name), it can be protected as a trade mark. But in this case, the name was too banal.

The Court of Cassation also dismissed the argument of century-long use. SPAL argued that it had used the name for over a hundred years and that this gave it a right. But the Court responded that tolerance of use by others (since it had not acted earlier) did not create an exclusive right, especially in the absence of practical necessity. What few people know is that tolerance can even be an obstacle: if you allow others to use your name without reacting, you lose your rights.

What this changes for you — practically

This decision has practical implications for associations, but also for landlords, tenants or co-owners who may have to deal with naming disputes. Here are a few concrete examples.

For an association in Dieppe: If you create an association "Les amis de la nature dieppoise", this name is descriptive and probably not protectable. However, if you invent a name like "NaturoDieppe", which is more original, you can register it as a trade mark and prohibit others from using it. undefined, I have encountered cases where local associations were refused protection for their name because it was too generic. The solution is to choose a creative name from the outset.

For a landlord in Fécamp: You lease premises to an association. If that association changes its name to a protected name, you might have obligations to amend the lease or obtain authorisations. But rest assured, this is rare.

For a buyer: If you buy a business (a set of assets and rights operated for a commercial activity) whose name is protected, you must check that the trade mark is registered and original. Otherwise, you may not be able to prevent a competitor from using a similar name.

For a co-owner: In a co-ownership, the owners' association may have a name. If that name is descriptive (e.g., "Syndicat des copropriétaires du 12 rue de la Paix"), it is not protectable. But if the co-ownership has an original name (e.g., "Résidence Les Oiseaux"), it can be protected.

The amounts at stake can be significant: an infringement action costs between €3,000 and €10,000 on average. Prevention is better than cure.

Four tips to avoid this type of dispute

• Choose an original name when creating your association or business. Avoid purely descriptive names (geographical, activity-related). Prefer an invented name or an original combination. For example, "Les Chats de Fécamp" is descriptive, "Félins Fécampois" is less so.
• Conduct a prior search before registering your name. Check on the INPI (French National Institute of Industrial Property) website whether the name is already used as a trade mark by another entity. This will avoid surprises.
• Register your name as a trade mark with the INPI. Registration costs around €200 for one class of goods or services. It gives you an exclusive right to the name for 10 years, renewable.
• React promptly if a third party uses it. If you do nothing, you risk losing your rights through tolerance. Send a formal notice (registered letter with acknowledgement of receipt) as soon as you become aware of the use.

Further reading: related case law and developments

The Court of Cassation's position in 1981 is part of consistent case law. Thus, in a judgment of 15 June 1993 (No. 91-16.290), the Court held that the name "Restaurant de la Gare" was too generic to be protected. Similarly, in a 2005 case, it refused protection for the name "Association des parents d'élèves de l'école Jean Moulin".

On the other hand, the recent trend is towards some flexibility for names that have acquired distinctiveness through use (so-called "acquired distinctiveness"). For example, the name "La Poste" was originally descriptive, but through use it became distinctive. However, in the 1981 case, SPAL did not prove that its name had become distinctive to the public.

Since this decision, the law has evolved with the Intellectual Property Code, but the principle remains the same: originality is key. For associations, it is therefore essential to choose an original name or to demonstrate sufficient use to acquire distinctiveness.

In practice: what to do

Checklist to protect your association's name:

1. Check the name's originality: Is it descriptive or inventive? If in doubt, consult a specialised lawyer.
2. Conduct a prior search: Use the INPI database (free online).
3. Register the trade mark: If the name is original, register it with the INPI for the classes corresponding to your activity.
4. Monitor use: Set up a Google Alert on your name to detect any unauthorised use.
5. In case of infringement: Consult a lawyer promptly to consider a formal notice or legal action.

Are you in a similar situation? A first 30-minute consultation with Maître Zakine (€45) can save you months of proceedings — and often much more. Book an appointment →