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Can brands be proud to be part of everyday language?

Vanessa Bouchara

Updated January 24, 2021
Can brands be proud to be part of everyday language?

When a mark has become known to the point of becoming the usual designation by the public of a type of product or service, this is not without consequences. Some will see it as a sign of supreme recognition and indisputable notoriety, others will fight this use by considering that it seriously damages their brand.

Si the position of the holders of brands is divided on the subject, the law is particularly clear on the legal consequences of a trademark that has fallen into everyday language.

Indeed, the right of brands allows the holder to have an operating monopoly over its brand valid, but this right is not unconditional. It can only exist if the brand is able to distinguish the products and services of a company from those of its competitors, and therefore to guarantee to the consumer that the products or services of the same brand do indeed have the same origin.

These limits on the rights to the brand must be fully understood and apprehended by rights holders since what is at stake is an important economic asset. One of the risks comes from the holder himself, who, by his actions (or lack of actions) may be led to lose his rights to his trademark when the latter becomes the usual designation of the product or service in question. it's about the forfeiture for degeneration.

The texts that define what degeneration is:

  • Article L.714-6 A of the Intellectual Property Code provides “Incurs the forfeiture of his rights the holder of a trademark which has become the usual designation in the trade of the product or service.”.
  • Article 20 of Directive (EU) 2015/2436, paragraph A, provides that: “The owner of a mark may be deprived of his rights when, after the date of its registration, the mark:
    (a) has become, through the activity or inactivity of its holder, the usual trade name for a product or service for which it is registered
    ”.

When can the mark be considered to have become the usual commercial designation of the product or service? And how is the fact or the responsibility of the holder to be assessed?

A BRAND THAT HAS BECOME THE USUAL DESIGNATION IN THE TRADE OF THE PRODUCT OR SERVICE

It is necessary to distinguish nullity ab-initio, which occurs when the mark is not considered distinctive at the time of its deposit, and nullity for degeneracy.

In order to know whether a trademark is likely to be revoked, the first question to ask is whether it has become, in trade, the usual designation of the product or service.

When we say that we drink a PINA COLADA or that we had a BOTOX session, do we feel that these are brands or are we using these terms in a generic sense?

Trademarks that become everyday words and lose their brand value

Thus, with regard to the VINTAGE mark (registered in particular for clothing), the Court of Appeal of Paris considered that " the term “VINTAGE” [is] widely used as a word in everyday language either as a qualifier or as a common name, in the sectors of activity of clothing, ready-to-wear, jeanswear, sportswear, in the press, has become for the customers concerned the usual and inevitable name of an old-fashioned or "retro" style of clothing items » and pronounced the revocation for degeneration of this mark (CA Paris, 4th Ch., Section A, April 20, 2005, RG n°04/03753).

The brand BOTOX (registered in particular for anti-aging preparations) suffered the same fate since it was considered by the Court of Cassation, that the Court of Appeal had rightly considered that " the sign 'botox' is commonly used to designate the product itself (botulinum toxin) and not the origin of the product, so that it was not used as a trademark (Cass., Com., 1er July 2008, RG n°07-13.349).

 

A color has also been considered by the Courts as having lost its function as brand, this is the CANDIA pink color (Pantone 212), registered for milk and dairy products. The Court of Cassation confirmed a judgment of the Court of Appeal of Lyon and considered that "companies in the dairy business use a fuchsia pink color which, without being identical to the pantone 212 pink color, is a very close shade that does not allow an average attentive consumer to make a distinction" .

In these conditions, “the Court of Appeal […] noting the widespread use of a sign distinguishable from it only by details imperceptible for this public, referred exactly to the public with whom the mark was to fulfill its function of designation of origin and, noting the widespread use of a sign distinguishable from it only by details imperceptible to that public, justified its decision that that mark had lost its distinctive character. » (Cass. Com., July 10, 2007, RG n°06-15.593).

Most of the decisions handed down in this area apply the text perfectly.

However, the aforementioned VINTAGE and CANDIA decisions went a little further and could be indicative of a jurisprudential tendency to go beyond the statutory definition. Indeed, neither CANDIA's pantone 212 pink color nor the term VINTAGE as such designates the product but rather one of its characteristics. Thus reference is made in the CANDIA decision to " generalized use of a sign rather than a sign which has become the usual designation of the product.

Under these conditions, regardless of the type of mark, whether verbal, figurative or consisting of a color, if the Courts consider that it has become the usual commercial designation of the product or service, or that the exploitation of the sign has become widespread and has thus made the mark lose its distinctive character, the first condition required by the texts is considered by the Courts to be fulfilled.

Thus, the trivialization of its mark, conveyed both by the general public and in the press, can have particularly detrimental consequences for the holder.

What is the relevant public to consider?

In order to determine whether a trademark has become the customary trade name for a product or service, the Courts take into account the perception by consumers or end users but also, depending on the characteristics of the market concerned, of the perception by professionals, such as sellers (CJEU, 3th Ch., 6 March 2014, Dist. C-409/12).

In terms of pharmaceutical products, this can play a significant role, as the General Court of the European Union noted when considering that a sign could continue to " exercise its function of indication of origin when an intermediary exercises a determining influence on the purchase decision of the purchaser, in such a way that his knowledge of the function of indication of origin of the mark allows the process to communication to succeed ". The Court concludes: that, having regard to the influence exercised by the professionals in question on the purchasing decision of end consumers, the fact that the latter would still perceive the function of indication of origin of the contested mark is insufficient to defeat the request for forfeiture given the importance of the perception that said professionals have of it" (TUE, 5th Ch., 18 May 2018, Dist. T-419/17).

More recently, in a decision that pronounced the degeneration of the brand CITY STADIUMS (registered for transportable sports infrastructure), the Cancellation Division of EUIPO considered that, in the case of very expensive products, the relevant public is made up of the main customers, which are local authorities and municipalities (EUIPO, Cancellation Division, November 29, 2021, Case C-48/999).

Moreover, in a case involving the famous brand SOPALIN, the Tribunal de Grande Instance of Paris considered that the designation of the product by the general public was not sufficient to characterize the degeneration, in the absence of production of sufficient evidence of " use in trade, both by consumers and by professionals (TGI Paris, 3thCh., 2th Sec., 18 November 2018, RG n°10/08785).

The relevant public, in the context of a degenerating request, will therefore not only be consumers or end users but also, depending on the characteristics of the product or service and the market, the professional of the products or services concerned.

Furthermore, in the event of a request for forfeiture for degeneration of a mark of the European Union, it is important to know that the forfeiture of the brand can be pronounced if it has become generic in a single member state (TEU, 9th Ch., November 8, 2018, Dist. T-718/16., and in the same sense EUIPO, Cancellation Division, 29 November 2021, n° C 48 999).

ASSESSMENT OF THE ACT OR RESPONSIBILITY OF THE HOLDER

The liability of the holder is clearly one of the criteria appearing both in the French and in the Community text. If the Intellectual Property Code refers to " a brand that has become of his own making [of the owner] the usual commercial designation of the product or service, the directive provides that forfeiture for degeneration may occur “by the fact of the activity or inactivity of its holder”.

This direct responsibility of the owner makes sense since as the owner of a mark, he must ensure that his mark constitutes and continues to constitute an indicator of origin. Otherwise, its brand can no longer constitute a valid trademark giving it a monopoly enforceable against third parties.

Following the example of what the Tribunal de Grande Instance of Paris considered in the CADDY judgment as being an "obligation" for the holder to oppose the use of its trademark as a synonym for trolley (TGI Paris, 3th Ch., October 29, 1997), the Courts will constantly do this work of analysis in order to conclude, or not, the responsibility of the holder in the degeneration of the mark.

Very recently, in the PIERRADE judgment, the Court of Cassation confirmed the judgment of the Lyon Court of Appeal which considered that the owner of the PIERRADE trademark (registered in particular for cooking appliances) should not be forfeited of his rights for the following reasons:

  • the holder had obtained several convictions from third parties on the basis of infringement,
  • he was notably opposed to the insertion of the word "pierrade" in "The Scrabble Official»,
  • he had sent several formal notices, and had prosecuted with a certain rigor the largest distributors or resellers of household appliances using this brand without authorization »,
  • he communicated on the existence of the “Pierrade” brand.

Under these conditions, the holder is considered to have " demonstrates real and sufficient vigilance to prevent its brand from becoming a common term for designating cookware in the trade » and the degeneration of the mark was not pronounced (Cass. com., May 18, 2010, RG n° 09-14.615, and in the same sense TGI Paris, 3rd ch. 3rd sect., May 16, 2014, RG no. 12-10245).

The brand PEDALO was also able to escape degeneration due to the number " very important procedures undertaken to protect the brand, the very large number of clarifications and warnings addressed to the press, to professionals in the nautical sector and to dictionary publishers reveal that he acted to ensure that the PEDALO mark is not perceived by the public as the generic designation of light boats with floats propelled by a pedal wheel (CA Aix-en-Provence, 2th Ch. Civ., January 9, 2006, RG n°03/06469 and in the same sense CA Aix-en-Provence, 2th Ch. Civ., January 14, 2010, RG n°08/09209).

In the PLACO case, the Court of Appeal, confirming the decision of the tribunal de grande instance, considered that the owner of the mark had had no " ceases to take legal action against third parties making, according to it, an illicit use of its trademarks "and had multiplied" communication campaigns in the general public and professional press to remind that Placo is a registered trademark which cannot be used as a common name ". Under these conditions, it was concluded that “ these multiple interventions illustrate the will of the company PLACOPLATRE to defend its brand and to oppose a usual designation of products and services under this term (CA Bordeaux, 1time Ch. Civ., September 24, 2019, RG n°17/05270).

It emerges from the case law that the proprietor of a mark which is very widely used by third parties, and can be considered to have become the customary designation in trade of a product or service, can escape degeneration if he takes sufficient and proportionate action.

The Courts assess the sufficiency of actions depending on the type and quantity of actions. Thereby :

  • the sending of formal notices or warnings is important but may be considered insufficient,
  • agreements with third parties that recognize the rights and undertake to cease exploiting the brands will necessarily be taken into account,
  • the objections and legal action may prove necessary, even essential in certain cases.

For a long time, it was important for holders to justify having also acted against dictionaries, magazines and newspapers. The basis of the action was discussed in case law.

Henceforth, Article 12 of Directive (EU) 2015/2436 and Article L. 713-3-4 of the Intellectual Property Code provide in fairly similar terms that if " the reproduction of a mark in a dictionary, encyclopedia or similar reference work, in printed or electronic form, gives the impression that it constitutes the generic term designating the goods or services for which it is registered » and that the holder makes a request for modification, the editor then has the obligation to specify that it is about a registered mark, at the latest during the following edition of the work.

It is therefore essential for the rights holder to be able to justify that he has acted regularly and to keep proof of the actions taken.

EFFECTIVE DATE OF FORFEITURE

Under Article L. 716-3 of the Intellectual Property Code: “ Forfeiture takes effect on the date of the request or, at the request of a party, on the date on which a reason for forfeiture arose. ". The provisions of Directive (EU) 2015/2436 of 16 December 2015 concerning the effects of forfeiture (section 47) contain similar provisions.

Under these conditions, and very logically, none of the actions and proceedings initiated after the action in forfeiture for degeneration will not be taken into account in the assessment thereof.

WHO IS COMPETENT TO PRONOUNCE ON THE DEGENERATION OF FRENCH BRANDS AND THE EUROPEAN UNION?

With regard to French trademarks, since the provisions resulting from the Trademarks Package, depending on the circumstances theINPI or the Courts can pronounce the forfeiture of one brand on the basis of degeneration.

The INPI has exclusive jurisdiction to hear requests for forfeiture primarily trained.

The Courts will remain competent when the request for revocation is made as a counterclaim in the context of ongoing legal proceedings (often on the basis of infringement), or when the request is related to an action which falls within the scope of the jurisdiction of the Court of Justice.

With regard to European Union trademarks, theEuropean Union Intellectual Property Office (EUIPO) is also competent when the request is made on a principal basis. Failing that, the National Courts of brands of the European Union (in France the Judicial Court of Paris) will be responsible for the dispute.

Conclusion

Brands must necessarily act and avoid being intoxicated by their success.

If becoming a brand known is the goal of any project creator, the protection of the asset most essential to its success must also be a priority.

In law, the answer could not be clearer: the owner incurs direct liability subject to sanction on his title when the mark has degenerated, namely when it has become the usual designation in the trade of his product, by his doing. The holder's liability is generally considered acquired by the Offices and Courts if he does not act in a manner proportionate to the infringements which are brought to his mark.

With the growing role of digital technology, and in particular the Internet and social networks, it is essential not to be content with traditional monitoring of brand registers, but to actively monitor the various media and initiate actions adapted to each use. It is also necessary to keep the proof of the various actions to be able more easily to oppose them to a third party who would try to obtain the cancellation of his mark for degeneration.

Whether or not the operational and legal teams agree on the issue, it is essential to avoid the trivialization of a brand which has met with great success. It is undoubtedly for this reason that brands such as KARCHER or MECCANO regularly oppose attacks that are made and communicate on their actions!

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