Industrial Property Law

The essential function of the trademark is to guarantee to consumers the identity of origin of a product or service . The trademark must guarantee to the consumer that the product or service bearing it is manufactured under the control of a single undertaking to which responsibility for its quality can be attributed , and must enable him to distinguish the product or service from those of another origin . It differs in this respect from labeling, the purpose of which is to provide the consumer with information on the characteristics of the product . This is the case with the words “bottled by” on wine labels, which are required by labeling rules and are not intended to distinguish the product, but only the bottler .

The criterion of indication of origin of the sign is a prerequisite for establishing its distinctiveness, and thus its validity as a trademark. A sign will not be deemed distinctive if it does not lead the relevant public to believe that the goods or services in question originate from the undertaking that owns it, even if the sign is not necessary, generic, customary or descriptive .  This judicial approach was enshrined in the Ordinance of 13 November 2019, which transposes the “Trademark Package” . While distinctiveness was previously defined in the negative by the law as the absence of the sign's usual or descriptive character, Article L. 711-2, 2° of the Intellectual Property Code now provides that any mark that is devoid of distinctive character, in other words arbitrary for the product or service it designates, cannot be validly registered, and if registered, is liable to be declared invalid.

In order to determine whether a trademark fulfills its function as a guarantee of origin, the courts take into consideration the point of view of the consumer concerned by the goods or services in question. A sign used for decorative purposes will only be valid if it also allows the consumer to distinguish the goods or services from those of competitors. Advertising images that would not be considered by the consumer or the end user as a sign of recognition, but only as a decorative element, do not meet the requirement of guarantee of origin . The sign “I love Paris” to designate products in the tourism sector, which conveys a message of attachment to the city of Paris illustrates this as it would be perceived by the consumer as a decorative sign . The mark consisting of a photograph of Che Guevara cannot, given the evocative power of this photograph in the eyes of the general public, be perceived by the consumer as a sign designating the origin of the goods or services, but only as a reference for political or artistic purposes to the work at issue .

The guarantee of origin function of the trademark can be affected by the intervention of a third party on the product or service. A company that washes Levi Strauss jeans without the authorization of the companies that own the trademark makes an essential modification to the jeans that transforms their nature and tends to make the consumer believe that the trademark owner is responsible for the entire production process. The trademark is therefore no longer a guarantee of the product's identity of origin . A retailer who presents reconditioned second-hand equipment under the name “new reconditioned equipment”, bearing the supplier's trademark, without the supplier's authorization, misuses that trademark . The function of a trademark is also infringed when, on account of an advertiser, a reasonably well-informed and attentive internet user is unable to determine, on the basis of the promotional link and the commercial message, whether the advertiser is a third party in relation to the owner of the trademark or, on the contrary, whether it is economically linked to the latter . In this case, an advertiser had used the term “Merck” as a meta tag on its website in order to appear in the search results of users searching for products of that undertaking.

CJEC Case 119/75 Société Terrapin (Overseas) Ltd., Judgment of 22 June 1976, LawLex200400003454JBJ.

Cass. com. 5 November 2002, LawLex202100005659JBJ.

Cass. 1re civ. 12 July 2011, LawLex202100005660JBJ.

CA Paris, 14 December 1992, LawLex202100005284JBJ.

Cass. com. 5 November 2002, LawLex202100005659JBJ

CA Paris, 13 June 2017, LawLex201700001061JBJ.

CA Paris, 26 May 2010, 08/15425, PIBD 2010, III, 491; CA Paris, 17 December 1992, LawLex202100005367JBJ, the sale of infringing goods in circumstances that do not make it obvious that the goods are not genuine constitutes a particularly serious  infringement.

Cass. com. 21 January 2014, LawLex201400000088JBJ.

Cass. com., 15 May 2024, LawLex202400003676JBJ.

Cass. com, 6 January 2015, LawLex202100005663JBJ.

Paquet “marques”. Ordinance No 2019-1169 of 13 November 2019, Art. 3, current L. 711-2 of the IP Code.

CA Paris, 12 June 2013, LawLex202100005287JBJ.

27. Origin of product