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 must be neither generic nor descriptive. Indeed, Article L.711-2 of the Intellectual Property Code (IPC) specifies that the sign chosen must be arbitrary. That is, it cannot be "the necessary, generic or usual designation of the product or service". The trademark must also not "serve to designate a characteristic" of the product or service concerned. This distinctiveness requirement is explained by the fact that the common name of the goods or services must remain available to all. The trademark must serve to identify the goods or services of a company, not to block a market. Once a trademark has been filed, the INPI can refuse to register it on the grounds that it is descriptive. Thus, the trademarks "Ticket Restaurant", "Banquette-lit" or "Beurre tendre" were rejected by the INPI. Indeed, these trademarks were based on terms deemed necessary to designate the products in question. In the "Artisans Déménageurs" case, however, the trademark had been validly registered. The judges did not rule on the validity of the mark. 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 trademarks enjoy only limited protection. Indeed, a descriptive trademark runs the risk of a cancellation action before the judge. If the district court declares the trademark non-distinctive, it will be cancelled. By definition, it cannot be defended in an infringement action. The owner of a weakly distinctive trademark (such as "Tour de France", "Ultra Doux" or "Un amour de fromage") will have difficulty proving infringement. Judges will tend to consider that minimal differences are sufficient to rule out the likelihood of confusion. In the "Artisans Déménageurs" case, the TGI of Rennes thus ruled 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 1^er 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 Déménagement should have record the assignment of the trademark on the INPI document in order to be able to invoke it before the TGI. But this would not have changed the decision of the judges. Indeed, for lack of distinctiveness, the trademark Artisans Déménageurs was almost indefensible. To know everything about the mistakes to avoid before registering a trademark, consult our guide.