Cancellation of the trademark TEXTO for lack of distinctiveness
The company SFR, owner of the trademark TEXTO, opposed the registration of the trademark ONE TEXTO and the exploitation of this trademark by a company of the same name having the following activity: “communication, marketing, advertising, mobile phone, audiotel and text message for business and management as well as in the field of robotics and hi-tech”.
SFR also accused this company of using a website under the domain name “OneTexto.com” whose dominant color is red, offering to boost the communication policy of companies by sending SMS.
By judgment of January 29, 2008 (TGI Paris, ch.civ 3, January 29 n°06/10489), SFR was dismissed of all its claims and the Tribunal de Grande Instance de Paris declared the trademark TEXTO and “Texto, Dites le en toutes lettres, dites le texto” invalid for lack of distinctiveness. SFR was also dismissed from all its claims for unfair competition.
SFR has appealed this decision.
The Court of Appeal, by decision of September 23, 2009 (CA, Paris -Pole 5 ch.01 n°08/02816), confirmed in all respects the first instance judgment.
Indeed, under the terms of Article L.711-2 of the Intellectual Property Code, the following are not distinctive
“(a) signs or names which, in common or professional language, are exclusively the necessary, generic or usual designation of the product or service
(b) signs or names that may serve to designate a characteristic of the product or service, and in particular the kind, quality, quantity, purpose, value, geographical origin, or the time of production of the good or provision of the service.
The Court noted that the distinctive character of a sign must be assessed in relation to the services designated in the registration and in relation to the perception of the relevant public, as of the filing date.
On the trademark “Texto, Dites le en toutes lettres, dites le texto” registered on March 23, 1998
In this case, the trademark “Texto, Dites le en toutes lettres, dites le texto” was registered to designate mobile messaging services.
“Texto” is the abbreviation of the word “textually”.
The words “say it, spelled out” describe how to send a text message for mobile messaging services, and refer directly to the service designated in the trademark wording.
Consequently, the trademark “Texto, Dites le en toute lettres, dites le texto” designates, within the meaning of Article L.711-2 b) of the Intellectual Property Code, a characteristic of the service designated in the application, and must be declared invalid for lack of distinctive character.
On the trademark “Texto” registered on January 23, 2001
The Court of Appeal noted that this trademark was registered to designate the written messaging service by radio mobile.
At the date of filing of the “Texto” trademark, this term had become customary to designate a message sent by mobile and that it was not associated with the SFR company.
Indeed, it appears from articles published in the newspaper Le Monde dated December 16, 2000, January 23, 2001, in the weekly magazine L’Express published on March 16, 2000 and January 11, 2001, that the term Texto was known to the public to designate a small written message, friendly, sent by cell phone.
Consequently, the term Texto was in common parlance for a messaging service before the SFR company filed its application, and it must therefore be cancelledfor lack of distinctiveness.
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