Marie-Gwénaëlle Chuit

As Steve frequently points out on this blog, trying to turn your trademark into a reference might lead to genericide, thus trademark owners should be very careful when walking this narrow line.

The French IP law (CPI) demands that a trademark be distinctive to be considered valid (L.711.2 CPI), and that owners must not let their brand become generic, otherwise risking to lose their rights to the trademark (L.714.6 CPI).

The first requirement led to the French mobile telecom company SFR losing its rights to the trademark TEXTO registered in 2001. The defendant in a complaint of infringement filed by SFR argued in return that the name TEXTO was already heavily used as a common name for short text messages sent via mobile phones, and this prior to its registration.  The judge approved and cancelled the trademark accordingly.

The second requirement led to the cancellation of the trademark PIÑA COLADA, which had been registered by the company Bardinet in 1974. Likewise, the judgment was based on the arguments of the defendant in a complaint filed by Bardinet.  The Cour de Cassation (Supreme Court) agreed on April 28, 2004 that the owner of the trademark had failed to appropriately react to the use of the name PIÑA COLADA to describe a cocktail of fruit juice and alcohol in cookbooks, on some websites, and even on bar menus, and that the trademark had therefore become generic.

However, a new jurisprudential trend seems to be emerging from French courts regarding trademark distinctiveness, in line with European decisions.

In its judgment last November, the Tribunal de Grande Instance of Paris (District Court) confirmed that the trademark SOPALIN, owned by the Italian company Sofidel (Soffass), had not yet turned out to be the usual name in the business of kitchen paper towels.

Even though the plaintiff demonstrated that the name SOPALIN was used on the internet, in the press, in books, at school, in designs applications at the French PTO, and even in court decisions to refer to kitchen paper towels, the Court decided this was not sufficient to demonstrate the genericide of the trademark since no evidence of the use of said name by professionals involved in the kitchen paper towels industry was found. The Court merely recognized an incorrect use of the term but not a “usual description of the product” in business.

In its judgment, the Court directly referred to the “Procordia Food” case of 2004 in which the European Court of Justice held that, in order for Trademark to lose its qualification as such, it should have become the usual description of the product not only among the general public, but also among professionals associated with commercializing the product itself.

Recently, the Lyon Court of Appeals upheld said decision, finding that the trademark LA PIERRADE had indeed not lost its distinctiveness although said denomination was largely used among the public – but among the public only – to describe a cooking device using heated stone.

So, yes, French trademark owners should always be on the lookout for trademark genericide, and be careful not to let their trademark become a common or usual name for describing the goods or services concerned. As long as said use is limited to the public in general, however, and does not spread to professionals involved in selling the product, they should be safe – for the time being.