Industrial Property Law

The court assesses the distinctiveness of the sign in relation to the goods or services covered by the registration  and the perception that the relevant public has of them . The court cannot base its judgment exclusively on the activity of the trademark owner or on the goods or services actually marketed under the trademark . The distinctiveness of the sign is assessed in relation to each of the  …

Assessment of distinctive character

The court assesses the distinctiveness of the sign in relation to the goods or services covered by the registration  and the perception that the relevant public has of them . The court cannot base its judgment exclusively on the activity of the trademark owner or on the goods or services actually marketed under the trademark . The distinctiveness of the sign is assessed in relation to each of the goods or services covered by the registration . A trademark that is not distinctive with respect to certain goods or services covered by the registration can only be partially cancelled with respect to those goods or services, and not with respect to all the goods or services covered by the registration . Nevertheless, if the goods or services covered can be classified in the same category, the court can determine the distinctiveness of a sign in light of the common and essential characteristic that the goods are “in relation to the skin” .

Distinctiveness is also assessed with respect to the perception of the sign by an average consumer of the goods or services in question, who is reasonably well informed and reasonably observant and circumspect. The term “Imparfaite” (imperfect) is distinctive if it is perceived by the consumer as an arbitrary sign capable of distinguishing the goods in question from those of the competition, and not as the description of a characteristic of the clothing products it covers . A French trademark composed of an English word is assessed in relation to the understanding of the term by French consumers. The signs “fizz”, “indoor” or “off-white” are distinctive if it is not shown that, on the day they were filed,  those terms were widely understood by the average French consumer . On the other hand, the sign “Giant” is, as of the date of its filing, devoid of any distinctive character, since the English adjective “giant” is easily understood by the French-speaking consumer of food and restaurant products, in particular “fast food” items, as meaning “very big” (the French translation being “géant") and, by extension, "enormous”, and thus refers to a characteristic of the products designated by the mark, in this case their size .

In the case of a complex trademark, distinctiveness is assessed both with respect to each of its elements taken separately, but also with respect to the overall impression produced by the sign . In order to declare the invalidity of a semi-figurative mark, a court of appeal cannot limit itself to considering the word elements of the mark without examining the overall impression produced by the sign . The mark “Week end in Deauville” forms a unitary whole which has a global meaning and is distinctive in itself to designate goods and articles of leather goods, clothing or furnishings . Similarly, a neologism that results from a combination of elements must be examined as a whole to determine whether or not it has distinctive character  . Any discernible deviation in the wording of the phrase from the terminology used in the everyday language of the relevant consumer class is likely to give it distinctiveness . This presupposes that, because of the unusual nature of the combination, the word creates an impression sufficiently different from that produced by the simple combination of the indications provided by the elements that make it up and becomes autonomous . The impression must be both auditory and visual . The addition of the prefix “Co” to the genitive of the Latin word “jus” gives the whole an arbitrary character, without any meaning of its own, which does not constitute the abbreviation of “legal advice” ("conseil juridique") . Similarly, the addition of the letter H in the center clearly differentiates the earlier mark ICHI from the element ICI, especially since both are short marks that are easily memorable for consumers, whose attention would be drawn to the presence of an additional letter . Terms such as “Baby-dry” cannot be considered as having, together, a descriptive character since they proceed, on the contrary, from a lexical invention allowing the mark thus formed to play a distinctive role . The association of the generic term Bril with differentiating prefixes, such as “super”, makes the sign lawful . The grammatical aspect of the word bio has no bearing on the distinctiveness of the sign bioderma for products “relating to the skin” .

CA Paris, 9 March 2018, No 16/24260, LawLex202100005953JB; Com, 25 January 2017, 15-14.804, LawLex201700000227JBJ; Cass. com, 20 September 2016, 14-28.356, LawLex202100005351JBJ; Cass. com, 2 June 2014, No 13-15.099, LawLex202100006096JBJ; Cass. com. 7 June 2011, No 10-19.742, LawLex201100001030JBJ CA Paris, 16 May 1997, No 96.19910, 1997-022408, LawLex202200000184JBJ.

CA Paris, 9 March 2018, No 16/24260, LawLex202100005953JBJ; Cass. com, 4 October 2011, No 10-16.994, LawLex202100006099JBJ; Cass. com, 6 January 2015, No 13-17.108, LawLex202100005663JBJ; CA Paris, 14 October 2011, 10-02010, LawLex202200001193JBJ.

Cass. Com, 20 March 2012, 11-14.941, LawLex202100006226JBJ

CA Rennes, 28 April 2015, No 14/07943, LawLex202200000030JBJ.

ECJ Case C-363/99 Koninklijke KPN Nederland NV v Benelux-Merkenbureau, Judgment of 12 February 2004, LawLex200900000525JBJ.

Case C-383/99 P Procter & Gamble Company, Judgment of 20 December 2001, LawLex202300004566JBJ, cited above

Case C-363/99 P KPN, Judgment of 12 February 2004, LawLex200900000525JBJ, cited above.

Case C-265/00 Campina Melkunie BV v Benelux-Merkenbureau, Judgment of 12 February 2004, LawLex200900001045JBJ.

CA Paris, 15 October 1997, No M19970606, LawLex202100006496JBJ.

CA Paris, 18 September 2024, LawLex202400006790JBJ.

Case C-383/99 P Procter & Gamble Company, Judgment of 20 December 2001, cited above.

Cass. com, 16 June 1992, No 90-20.833, LawLex202100006216JBJ.

Cass. com, 3 June 2014, 13-15.099, LawLex202100006096JBJ; Cass. com, 19 December 2000, No 98-11.979, LawLex200200000694JBJ. 

Cass. com, 20 September 2016, 14-28.356, LawLex202100005351JBJ.

Cass. com, 24 May 1994, No 92-14.435, LawLex202200000976JBJ; Cass. com, 31 January 2018, LawLex201800000233JBJ. 

Cass. com., 7 June 2011, No 10-19.742, LawLex201100001030JBJ, a court of appeal cannot declare the invalidity of a trademark based on the lack of distinctive character with regard only to children's games and toys reproducing the mooing sound of a cow, without taking into account the other goods and services covered by the trademark; Cass. com, 2 June 2014, No 13-15.099, LawLex202100006096JBJ, even if the term “boco”, which immediately in plural refers to “jars” (bocaux), is very weakly distinctive, it is not necessarily devoid of distinctiveness to designate each of the goods and services covered by the registration.

CA Paris, 17 December 2021, 21/00970, LawLex202200001042JBJ.

Cass. com, 4 October 2011, No 10-16. 994 LawLex202100006099JBJ, regarding the sign “Fizz”; CA Paris, 28 September 2005, n° 02-17672, LawLex200500009924JBJ, regarding the sign “Indoor” ; CA Paris, 18 May 2021, 19/02982, LawLex202200000873JBJ, even if the color white or off-white constitutes an essential characteristic of the goods concerned, the sign “off-white” is not devoid of distinctive character in relation to the goods concerned, since the relevant French public will not understand the meaning of the term “off-white” taken as a whole as meaning off-white or white but rather as “non-white” or “absence of white”, and will not recognize this sign as a description of an intrinsic characteristic of the goods concerned.

Cass. com., 27 January 2021, No 18-20.702, LawLex202100000273JBJ.

ECJ Case C-383/99 P Procter & Gamble Company, Judgment of 20 December 2001, LawLex202300004566JBJ; CA Paris, 25 April 2007, 2003/11619, LawLex202200001336JBJ; TGI Paris, 28 September 2005, No 18-20.702, LawLex202100000273JBJ; CA Paris, 25 April 2007, 2003/11619, LawLex202200001336JBJ; TGI Paris, 28 September 2005, n° 02-17672, LawLex200500009924JBJ.

Industrial Property Law

44. Assessment of distinctive character

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Les décisions de justice citées dans ce paragraphe :

Les notions juridiques connexes

44. Assessment of distinctive character

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Les décisions de justice citées dans ce paragraphe :

Les notions juridiques connexes

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