Trademarks and Labelling: the autonomous approaches that are worth utilising!

The HERO company, which is the owner of French trademarks, had an action brought against it in the courts by a competitor who considered that these trademarks were null...

The HERO company, which is the owner of the French and trademarks had an action brought against it in the courts by a competitor who considered that these trademarks were null, and that the promotion and communication of products under these allegedly misleading trademarks had the effect of giving the HERO company a clear advantage over its competitors in capturing a portion of their clientele, characterizing an act of unfair competition to its detriment.

Firstly, the plaintiff indicated that on according to the DGCCRF (General Directorate for Competition Policy, Consumer Affairs and Fraud Control) the term “pure” can only be placed in the generic name of a product to indicate that said product is composed of a single element, and thus distinguish it from a complex product. Secondly, it can be placed after the name only if the product is microbiologically pure, unless it is obvious for the product, otherwise it will have the effect of distinguishing similar products improperly and fictionally. 

The plaintiff further stated that the Consumer Code requires that labelling must not contain any reference that suggests the foodstuff possesses specific characteristics when in fact all similar foodstuffs possess these same characteristics.

The Supreme Court has just ruled (21 January 2014) on this case, very clearly recalling the specific functions of the trademark and labelling. 

It first indicated that “…the function of the trademark is to ensure to the consumer or end user the identity of origin of the goods designated by the trademark, by enabling him, without confusion, to distinguish this product from those of another origin, while the labelling aims to provide the buyer and consumer with information on the characteristics of the concerned product “.

The Supreme Court also confirmed the position of the Appeal Court on agreeing that the deceptiveness of a trademark should be assessed under the provisions of the Intellectual Property Code and not those of the Consumer Code.

Moreover, the Supreme Court stated that “the judgment noted, through its own and adopted reasoning, that duly informed consumers know that jam composed of a mixture of fruit and sugar is not expected to contain any bacteria as long as it has not been opened. It further noted that the sign “Confi’Pure” is a neologism resulting from the joining of the term “confi” and the adjective “pure” which when taken as a whole is evocative of jellies, jams and marmalades with a fruit base, but when put together with a figurative element consisting of a stylized leaf or a three dimensional representation on the product packaging, does not seek to emphasize the purity and presents an arbitrary character”.

The Supreme Court logically concluded that the Appeal Court was justified in its decision not to declare the trademarks invalid, by correctly estimating that the average consumer perceives the word “pure” not as referring to a particular quality that competing products do not possess, but as a fanciful term in association with the term “confi” and a figurative element, with no misleading character to identify the origin of the covered products.

This decision confirms, if confirmation was needed, the benefit of analysing your new labelling projects from different angles, the trademark must never be omitted from your thinking and can allow you to advantageously stand out by investing in an additional, autonomous asset.

REGIMBEAU has a team specialising in trademarks and labelling at your disposal to advise and guide you in the protection and defence of your rights.

Published by

Martine Bloch-Weill

Associée gérante