Weak trademark but trademark all the same!

Published onOctober 2013

After twelve years and six court decisions, including two from the French Supreme Court, figurative trademark registration “TOP VIANDES”, which could be translated into English by TOP MEAT or BEST MEAT, was declared original and perfectly distinctive in connection with… meat products.

There is no colored reproduction of the figurative trademark but it is described as showing a red rectangle into which is represented a white flag inside which are written the words “TOP” in blue and “VIANDES” (MEAT) in red.

In 2001, the owner of the trademark filed an infringement action against a butcher who used the expression “TOP VIANDES” as his company name. In 2004 and 2005 successively, the First instance court of Castres and the Court of Appeals of Toulouse (southwest of France) declared the trademark was invalid for lack of distinctive character.

In 2008 however, the Cour de cassation (French Supreme Civil Court) cancelled the decision of the Court of Appeals because the judges had not examined the overall impression given by the mark.

The Court of Appeals of Toulouse consequently reexamined the case in 2011 and reached the conclusion that the mere shape of the flag inside which are written the words “TOP” and “VIANDES” (MEAT), that only have a descriptive character, does not give the sign sufficient distinctiveness so that it can be considered as valid.

Rather curiously, the Court of Appeals did not mention its appreciation had been made globally this time by taking into account the overall impression given by the mark… and its decision was therefore cancelled again by another judgment of the Cour de cassation in 2012.

For the third appeal, the case was sent to the Court of Appeals of Bordeaux. Surprisingly, it stated that:

  • whereas the word “VIANDES” is a generic appellation, the word “TOP” does not designate a specific character of the product but alludes to its superiority,
  • globally, the assembly of colors, typography, drawings and words produce an overall impression that gives the contested mark an original and perfectly distinctive character,
  • the drawing of the flag shows an arbitrary and fanciful character in connection with the business of meat, which strengthens the distinctiveness of the mark.

As a consequence, the trademark was declared valid. At what cost?

The decision is open to criticism especially as regards the appreciation of the distinctive character of the word “TOP”. The Court of Appeals judged that this word alludes to the superiority of the product.

But Article L.711-2 of the French Intellectual Property Code states that “The following shall not be of a distinctive nature: […] b) Signs or names which may serve to designate a feature of the product or service, particularly the type, quality, quantity, purpose, value, geographical origin, time of production of the goods or furnishing of the service […]”.

We believe that the word “TOP”, and even the expression “TOP VIANDES” (TOP MEAT or BEST MEAT), are precisely signs that may serve to designate the quality or the value of the covered goods, i.e. meat. And we even believe that it was precisely the intention of the applicant.

For the Court of Appeals, the trademark has enough distinctive character when examined globally, taking into account both verbal and figurative elements. So maybe the trademark gets its distinctive character from the figurative elements.

But is it really reasonable to declare “a red rectangle into which is represented a white flag inside which are written the words “TOP” in blue and “VIANDES” (MEAT) in red” original? And since when originality is even relevant in assessing the distinctiveness of a trademark?

After all, maybe it would be a good thing that the Supreme Court issues another decision in this case…

In the meantime, two conclusions can be made:

  1. Verbal marks with very low distinctive character can still be registered in France provided they are paired with figurative elements, even if these figurative elements are not very original;
  2. However the protection of such marks is limited and infringement would not be recognized unless the marks are reproduced identically or almost identically.

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