“Signs or names which may serve to designate a characteristic of the goods or services covered by the trade mark are devoid of any distinctive character; (…) It is irrelevant whether the characteristics of the goods or services which may be the subject of the description are commercially essential or merely ancillary”.
This is what the Cour de cassation, the Highest civil Court in France, decided in a case dealing about a conflict between the French trademarks GIANT and PIZZA GIANT SODEBO. Quick filed a lawsuit against Sodebo for infringement of its trademark GIANT, as well as for unfair competition, and requested the invalidity of the mark PIZZA GIANT SODEBO. In defense, Sodebo requested the nullity of the French part of the International trademark GIANT.
The key question relates to the distinctiveness of the adjective GIANT in connection with prepared meals.
The First Instance Court of Paris held that GIANT was not distinctive and declared the mark null and void: “The word GIANT is an English adjective meaning giant or enormous in French. It must be pointed out with the defendant that this term, in particular because of its proximity to the French adjective “géant”, is very easily understood by the French consumer, who is also accustomed to the use of English words, particularly in the field of commerce and, above all, in the field of fast food, of Anglo-Saxon origin. Moreover, in the field of food products it is common practice to use adjectives which describe the characteristic put forward, especially as regards large or small quantities. In the present case, the term GIANT is intended to designate the important dimension of the food and will be perceived only as such by the consumer. Consequently, the term GIANT is devoid of any distinctiveness” (24 October 2013, Case No.12/10515).
The Court of Appeal of Paris adopted a different position, considering that the trademark amounts to evocation and not designation: “Considering that the English word “giant” because of its linguistic proximity with its French equivalent, was on the date of the filing of the GIANT mark on 14 June 2006 understood by the French-speaking consumer as signifying giant and by extension enormous; whereas it follows that this term suggests, in a general and impersonal manner, for all the goods and services concerned, the particularly important dimension of the part of the products or the size of the services operated under that sign; whereas the fact that an undertaking wishes to confer a positive image on its products or services indirectly and abstractly without directly and immediately informing the consumer of one of the qualities or determining characteristics of the goods or services concerned, is a matter of evocation and not of designation within the meaning of Article L.711-2 (b)” (14 April 2015).
The Court of Appeal intends to take a pragmatic approach: is the message conveyed by the mark a key and determining factor for the public at the time of purchase?
This approach is censured by the Court of Cassation’s decision, the text of which has been taken verbatim from the Postkantoor Case (ECJ 12 February 2004, Case C-363/99, Koninklijke KPN Nederland NV v/ Benelux-Merkenbureau): “It is also irrelevant whether the characteristics of the goods or services which may be the subject of the description are commercially essential or merely ancillary. The wording of Article 3(1)(c) of the Directive does not draw any distinction by reference to the characteristics which may be designated by the signs or indications of which the mark consists. In fact, in the light of the public interest underlying the provision, any undertaking must be able freely to use such signs and indications to describe any characteristic whatsoever of its own goods, irrespective of how significant the characteristic may be commercially”.
Quick had already faced the refusal of its EU trademark application by the EUIPO for lack of distinctiveness: “As a laudatory term for the above goods, QUICK is devoid of the inherent capacity to enable the consumers concerned to identify the goods by their commercial origin. Consequently, the sign is devoid of any distinctive character within the meaning of Article 7(1)(b) CTMR as regards the above-mentioned goods. The sign QUICK consists exclusively of an indication which may serve, in trade, to designate an important quality of the goods concerned, that is to say the speed with which they can be prepared and served. Therefore, the objection based on Article 7(1)(c) CTMR is also founded as regards these goods” (BoA, 17 September 2002, R 1117/2000-2, confirmed by ECJ, 27 November 2003, Case T-348/02).
The merit of such interpretation of the law is to maintain some degree of objectivity in assessing the distinctiveness or non-distinctiveness of a trademark and not to make it depend on the marketing plans of the applicant, which can largely evolve during the life of the trademark.