The complicated registration of the SIMPLISSIME trademark

  Like most publishing houses, Hachette protects its intellectual property rights, and as such owns numerous trademarks. These correspond to book or magazine titles, characters, events and also collections. For example, in 2015, on the occasion of the launch of a collection of recipe books that are quick and easy to make, Hachette registered the trademark "SIMPLISSIME". But this registration was not as simple as expected.  

Refusal of the INPI: the SIMPLISSIME mark is not distinctive

In 2017, the National Institute of Intellectual Property (INPI) rejects the trademark application. According to the examiner, SIMPLISSIME is not a distinctive mark. Distinctiveness is one of the conditions for the validity of trademarks.. In order to be distinctive, a trade mark must distinguish the goods or services of one undertaking from those of a competing undertaking. Conversely, descriptive trademarks (which strongly evoke the goods or services referred to in the application) are not distinctive. The INPI will refuse to register them. Indeed, the terms considered descriptive are terms that must remain available to all market operators. In this case, the INPI considered that the mark SIMPLISSIME did not fulfil this essential role of identifying the goods concerned. Indeed, the mark is composed of the word "simple" and the superlative suffix "issime". The resulting term SIMPLISSIME therefore appears more as a laudatory sales argument. Consequently, the INPI refuses to register the SIMPLISSIME trademark, which will, according to the INPI, be perceived by the public as extolling the merits of the products and not as a guarantee of their commercial origin. In May 2018, Hachette appealed against this decision.  

Hachette defends its brand SIMPLISSIME

In its appeal before the Versailles Court of Appeal, Hachette put forward the following arguments:

• The mark would be distinctive because it includes graphic elements.
• The name SIMPLISSIME would only be evocative. It would convey an aspect unrealistic. As such, the consumer perceives it as humorous or offbeat.
• Finally, the mark SIMPLISSIME would have acquired a distinctive character by virtue of its use.

It is indeed accepted that weakly distinctive marks can be registered in semi-figurative form (graphic elements to enhance distinctiveness). In addition, evocative marks have long received fairly favourable treatment before the INPI.. Unlike descriptive marks, the "evocative" character did not constitute an obstacle to registration. However, these marks remained very difficult to defend in a conflict. Finally, Article L. 711 of the Intellectual Property Code (CPI) provides that: "Distinctive character may [...] be acquired through use". This is the case when the public perceives the trademark as an indication of origin, even though the trademark is weakly distinctive. Thus, the VENTE-PRIVEE trademark had become distinctive after its registration.

Versailles Court of Appeal: no SIMPLISSIME trademark for Hachette

On October 9, 2018, the Versailles Court of Appeal handed down its decision on the SIMPLISSIME trademark. According to the judges, the term SIMPLISSIME describes "something so simple and convenient to use". In so doing, the mark does not fulfill its role as an indicator of origin. The Court also considers that the graphic elements are insufficient to strengthen the distinctiveness of the mark: "the slightly stylised font, the addition of a colour or a simple geometric shape cannot cause an undistinctive term to escape rejection of the registration". Finally, the Court points out that "the acquisition of the distinctive character of a sign through use must be assessed on the day of filing". Since Hachette had provided only evidence of use subsequent to the application for registration of the mark, that evidence was not considered sufficient by the judges. The SIMPLISSIME brand was therefore rejected in its entirety. However, Hachette does not admit defeat. The publishing house thus proceeded to re-register the SIMPLISSIME trademark on March 7, 2019.. This time, Hachette is counting on acquiring distinctiveness through use, as the SIMPLISSIME collection is well known to the French public. In conclusion, it should be remembered that a trademark application is not always simple and that professional support can be very useful!