SHOULD I FILE A MARK EVEN IF IT IS “WEAK”?
The essential function of a mark is to ensure to the consumer the identity of origin of the good or service it designates, by enabling him, without any possibility of confusion, to distinguish that good or service from those of competitors.
Only distinctive marks may thus be protected.
However, the scope of protection of a mark may vary depending on whether it has a strong distinctive character or a distinctive character of lower degree with respect to the goods and/or services covered in its registration.
One may therefore distinguish:
- marks of normal distinctive character and strong marks: marks composed of signs (words or logos) arbitrary in view of the covered products/services (ex.: Apple or the logo consisting of an apple for computers or phones). A mark's reputation can increase its distinctive character;
- “weak” marks: marks consisting of signs which evoke characteristics of the goods or services.
The choice of the mark is strategic for my business:
- Either I invest in an arbitrary mark (strongly or moderately distinctive) clearly distinguishing from my competitors’ marks: I will then have to make significant efforts of communication at the start of my business so as to impose it onto customers. Yet, my mark will acquire a very strong distinctive character through its use.
It may be an invented term, the name of the product creator or of the company, a dictionary term that was arbitrarily chosen to designate the goods or services.
- Or I opt for a mark that evokes the characteristics of the product or service to the customers, so that it guides their choice. I will then have to expect:
(i) that numerous identical or similar marks be revealed by a prior rights search,
(ii) a refusal of registration if INPI or OHIM considers the mark as descriptive, generic or commonplace for the goods or services it designates,
(iii) an uncertain protection against imitations,
(iv) a dilution of its distinctive character, due to the use of the mark by competitors or the public in a descriptive or generic way.
Thus, the French Supreme Court clearly stated the principles in a decision of January 6, 2015 regarding the mark “I ♥ Paris “: “after recalling that, to be distinctive, a sign, even if it is neither necessary, nor generic, nor usual, nor descriptive, must lead the relevant public to believe that the goods or services at stake come from a particular undertaking [...], that the semantic content of the two signs at issue taken as a whole, in that they carry a message of attachment to a particular city, will lead the consumer to perceive them as decorative signs the meaning of which he or she will understand whatever his or her language, and not as trademarks guaranteeing him or her that the products on which they are affixed are manufactured and commercialized by the company X, even though they are placed on the labels".
See also the following decisions:
- The mark JUSTFA was rejected, the INPI considering that "as a whole, the applied sign will be without any difficulty understood by the French-speaking consumer as the phrase “just fabulous”, the English language being widely taught and practiced in France, and given that the mere fusion of the two terms is not sufficiently perceptible by the consumer to confer another meaning"(INPI, 18 March 2015).
- The infringement action based on the mark against the mark was rejected, the Court of Appeal of Nancy in its decision of 3 February 2015 considering that the terms 'Grands opticiens' (in English 'Great opticians') are purely descriptive of the concerned activity and that, in this regard, they are deprived of any distinctive character, so that there is no likelihood of confusion between the two marks.
- In addition, the distinctiveness must be assessed with regard to the products and services covered by the application. It is therefore not a theoretical concept, but a matter of a case-by-case basis evaluation.
Regarding the validity of the mark, after noting that "the English word 'giant', by its linguistic proximity with its French-language equivalent, was on the date of filing of the mark 'GIANT' (14 June 2006), understood by the French consumer as “géant” and, by extension, as “huge”; it results that this term suggests, in a general and impersonal way for all the covered products and services, the particularly important size of the portion of products or the importance of the services offered under that sign”, the Court considers that "the fact that a company wishes to provide a positive image to its products or services, indirectly and abstractly, without directly and immediately informing the consumer of one of the qualities or one of the defining characteristics of the products and services concerned, is a matter of evocation and not of designation in the sense of Article L 711-2 b) of the French IP Code; considering therefore that the brand 'GIANT' seems inherently arbitrary and distinctive to enable the consumers to identify the origin of the goods and services bearing it";
However, the intensive use and / or the duration of use of a mark may confer to a mark its distinctive character even if it was primarily lacking it. Thus, if I have extensively used my mark, I can, in support of the filed application, rely on this prior use that confers to it a distinctive character required for its protection, in order to create rights opposable to third parties.
Indeed, the last paragraph of Article L 711-2 of the French IP Code and Article 7 (3) of the Regulation (EC) No 207/2009 on the Community trade mark provides in some cases that the distinctiveness can be acquired through use.
Thus, the Court of Appeal of Paris, in a decision of 14 April 2014, considered that the French word mark 'SeLoger.com' No. 3 436 371 filed on 22 June 2006 and registered on 27 April 2012 had already acquired a distinctive character through use for the goods and services in real estate, computer data bases or electronic files related to the field of housing and real estate, as well as their constitution and exploitation: "considering that, however, as the court rightly pointed out, the term 'seloger.com' was at the time of filing of the trademark in 2006, notoriously used by the company Pressimo on Line to designate the website 'www.seloger. com' offering a service of access to the database of ads for buying and renting real estate; while indeed, it follows from the general presentation of the website, created in 1996, that it had 922 273 visitors as of March 2002 and that it had been available on mobile phones since 2002; that in view of the Benchmark Group Forum of 23 March 2004, it is the most visited real estate site by 46% of respondents and 73% of Internet users know it; that according to a study in August 2005 by TNS Sofrès, with a level of notoriety up to 87%, it ranks first in the category of real estate sites on the Internet ".
In the application, a descriptive mark can be combined to another element so that the combination thus formed is sufficiently distinctive to be protected. Obtaining a trademark registration is usually deterrent from the perspective of competitors.
The following marks have been considered similar and the authorities have established the existence of a likelihood of confusion even in the presence of weakly distinctive terms:
Thus, in a decision of 14 April 2015, the Court of Appeal of Paris considered that the mark “GIANT” in the name of the company QUICK was distinctive and that the use and registration of the mark “PIZZA GIANT SODEBO” by the company SODEBO infringes it.
and (Opposition Division of OHIM, 29 September 2015)
INFLUENCE DIGITALE and INFLUENCES (Court of Appeal of Paris, 20 September 2013)
However, the following marks have not been considered as similar, because the common element is either descriptive or weakly distinctive and the overall difference suffices to avoid a risk of confusion:
and (Opposition Division of OHIM, 11 August 2015)
and (Opposition Division of OHIM, 25 August 2015)
First part of the article : Should I file a complex mark or should I file a word mark and a logo separately ?
Publication date : February 2016