According to French and European trademark Law, “a trade mark shall be liable to revocation if, after the date on which it was registered, in consequence of acts or inactivity of the proprietor, it has become the common name in the trade for a product or service in respect of which it is registered” (1).
As a consequence, trademark owners should carefully watch their trademarks and take appropriate measures every time necessary to avoid that their trademarks should become customary in the current language or in the bona fide and established practices of the trade.
Some preventive measures are common sense, such as informing the general public that the marks are indeed trademarks by using such symbols as ® or ™ (2).
Of course, trademark owners should not hesitate to take defensive measures every time their trademark rights are infringed or when their trademarks are used without their prior consent, in which cases they should send warning letters or cease and desist letters.
But sometimes this is not enough and legal action must be taken. That is why a recent judgement by the Court of Appeals of Paris must be recognised.
The mark MECCANO is a very old trademark owned by French company MECCANO to cover toys and games, especially construction games (3).
French weekly news magazine LE POINT had used the name Meccano in several articles, it seems as a metaphor for assembly or construction systems. Many times, the trademark owner had sent warning letters to the publishing company reminding that MECCANO was not a common name and was not to be used as such. But the warnings were never quite heard.
Considering such repeated use was detrimental to the distinctive character of the trademark, French company MECCANO eventually brought the case before the French courts and was rewarded with a favourable judgment. The Court of Appeals of Paris disapproved of the magazine repeated use of the trademark as a name of the common language without ever indicating that it was registered and the publisher was sentenced to pay significant damages in the amount of €30,000.
Such a decision may worry journalists, authors and publishers. However in most cases, when the unauthorised use of a mark as a common name is made sporadically, the trademark owner would be satisfied and get fair compensation by a published disclaimer apologising for the misuse.
(1) Article 12, 2, a) of Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks, and in almost identical words, Article L.714-6, a) of the French Intellectual Property Code.
(2) See our article “Intellectual property rights warning”.
(3) The trademark is registered in a great number of countries in the world, including in France, in other European countries or in the U.S.