Why is it necessary to choose a distinctive mark?
In a recent caseIn a judgment between the removal company Ariase and the company Picard Déménagement, the Rennes District Court held that the lack of distinctiveness of trademarks and domain names in question made it possible to rule out any fault. The court dismissed Ariase's claims for trademark infringement and unfair competition. Indeed, the trademark "Les Artisans Déménageurs" and the domain name lesartisansdemenageurs.com were not sufficiently distinctive to be opposed to Picard Déménagement, which operated the website artisans-demenageurs.com.
1. Distinctiveness as a condition for the validity of the application
A trademark should not be generic or descriptive. Indeed, Article L.711-2 of the French Intellectual Property Code (CPI) specifies that the sign chosen must be arbitrary. In other words, it cannot be "the necessary, generic or usual designation of the product or service". The mark must also not "serve to designate a characteristic" of the product or service in question.
This condition of distinctiveness is explained by the fact that the usual denomination of the goods or services must remain available to all. The trademark must serve to identify the goods or services of an undertaking, not to block a market.
Once the trademark has been registered, the INPI can thus refuse to register it on the grounds that it is descriptive. Thus, the trademarks "Ticket Restaurant", "Banquette-lit" or "Beurre tendre" have been rejected by the INPI. Indeed, these marks were based on terms deemed necessary to designate the goods in question.
In the "Artisans Déménageurs" case, however, the trademark had been validly registered. The judges did not rule on the validity of the trademark. Indeed, the new owner (Ariase) had not registered the change with the INPI. Ariase had not been able to prove that it was the owner of the trademark in question.
2. A non-discriminatory trademark does not effectively protect
Weakly distinctive marks enjoy only limited protection. Indeed, the descriptive mark runs the risk of an action for annulment before the court. If the district court declares the mark to be non-distinctive, it will be annulled. It cannot by definition be defended in an infringement action.
The owner of a weakly distinctive trademark (such as the "Tour de France", "Ultra Doux" or "Un amour de fromage" trademarks), will find it difficult to prove infringement. Judges will tend to consider that minimal differences are sufficient to eliminate the likelihood of confusion.
In the "Artisans Déménageurs" case, the High Court of Rennes ruled that "[t]he Court of First Instance of Rennes thus held that the total lack of distinctiveness of the terms used for domain names, as well as differences in appearance, preclude the slightest risk of confusion. "Yet the domain names lesartisansdemenageurs.com and artisans-demenageurs.com had many similarities. But the use of terms that were widely used in the industry made these sites totally descriptive.
Conclusion
In its decision of 1er October 2018, the Rennes Court of First Instance finally recalled that the terms necessary or useful for the designation or description of the products, services or activities proposed, belong to the public domain. These terms " must remain available to everyone so that no one can be considered at fault for using them. »
Ariase Moving should have record the assignment of the trademark on the act of the INPI in order to be able to invoke it before the High Court. But that would not have changed the judges' decision. Indeed, due to a lack of distinctiveness, the Artisans Déménageurs trademark was almost indefensible.
To find out everything you need to know about mistakes to avoid before registering your trademark, consult our guide.