Industrial Property Law

Signs or names which, in everyday or professional language, are exclusively the necessary, generic or usual designation of the product or service are devoid of distinctive character . These criteria have been rewritten in new Article L. 711-2, 4° of the Intellectual Property Code, which now refers to a trademark “composed exclusively of elements or indications that have become customary in current …

Marks composed of customary indications or signs

Signs or names which, in everyday or professional language, are exclusively the necessary, generic or usual designation of the product or service are devoid of distinctive character . These criteria have been rewritten in new Article L. 711-2, 4° of the Intellectual Property Code, which now refers to a trademark “composed exclusively of elements or indications that have become customary in current language or in the bona fide and established practices of the trade”.

A trademark is necessary when it consists of a sign that is indispensable to designate the product or service in question in current or professional language. The use of such a sign by a third party does not constitute an infringement. The term “argane” (argan) constitutes the necessary designation of the vegetable substance used for hygiene and skin care . The courts that found the reproduction of the terms “buckfast” and “buck” to be infringing should have ascertained whether those terms had not become necessary in the language of beekeeping professionals to designate a certain type of bee . On the other hand, even if their use is regulated by ministerial orders, the signs “simple”, “coupled”, “trio”, “tiercé”, “quarté+”, “quinté+”, “2 out of 4” and “multi” are not necessary to designate products or services related to horse racing, as online betting operators are exclusively subject to the requirements of the law relating to competition and the regulation of the online gambling sector, which does not refer to any of those designations .

A mark is not distinctive if it is generic. A mark must be independent of the elements that constitute the ordinary designation of the product or service or class of product or service to which it relates, so that the consumer or end user can recognize it among objects of the same kind . A designation acquires a generic character when it is used by a significant part of the relevant public . The mark “Maison du café”, consisting of the term coffee, necessary designation of the product, and maison, necessary designation of the place of packaging and marketing of the product , the terms “Lambig” and “Lambig Breiz”, to designate the cider brandy used by consumers and professionals in the Finistère and Lower Brittany regions  , “Bril” and “Super” to designate car care products , or the acronym “DVD” to designate compact disc players and video disc players  are generic in nature. On the other hand, the term “Kir” is not a generic term to designate “blanc-cassis”, an everyday consumer product that is widely available, since it is used only by consumers in the city of Dijon .

A mark is customary or commonplace when the sign of which it is composed constitutes the familiar designation of the product or service concerned. This is the case for the terms: “Affaires”, commonplace to designate a newspaper dealing essentially with economic and market activities , “long”, “big”, “double”, commonplace in the “fast food” sector , “Speed dating”, which usually designates, not only for the press but also in everyday French language, a fast dating service between single people  , “Balise”, common to designate plastic fences  or the shape of a naked bottle to designate drinks . On the other hand, the expression “au bain marie” to designate a restaurant service  , “coup de cœur” for clothing  or “Monkiosque” to designate online press sales, subscription or distribution services  were considered to be distinctive. The slogan “Allez les bleus”, registered one year before the 1998 World Cup, is a valid trademark as long as it is not, on the day of its registration, customary to designate goods and services related to football . Similarly, the color green, which is neither necessary for dishwashing liquids nor a common practice, applied to these products on the date of filing of the trademark, has a distinctive character .

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Cass. com, 27 January 2021,  LawLex202100000273JBJ.

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Cass. com., 2 November 2011, LawLex202100006095JBJ.

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Industrial Property Law

49. Marks composed of customary indications or signs

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Les notions juridiques connexes

49. Marks composed of customary indications or signs

Demandez un accès gratuit au contenu exclusif Livv – juristes d’entreprise

Les décisions de justice citées dans ce paragraphe :

Les notions juridiques connexes

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au contenu exclusif Livv – juristes d’entreprise