Distinctiveness

Distinctive character (or “distinctiveness”) is one of the essential conditions for the validity of a trademark , as set forth in Article L.711-2-2° of the Intellectual Property Code.

However, the notion of distinctiveness is not defined in the texts, but results from jurisprudential interpretations.

The distinctiveness of a sign refers to its ability to fulfill the essential function of a trademark, namely to indicate to the average consumer the commercial origin of the product(s) and/or service(s ) and to distinguish them from those of competitors.

In such a case, the trademark will be recognized as distinctive by the Office (or the judge if it is a question of establishing the requirements for the validity of a trademark in legal proceedings).

Thus, a contrario, the signs :

• Which in the current or professional language constitute for the public the necessary, generic or usual designation of the product(s) and/or service(s );
• Can be used to designate a characteristic of the product(s) and/or service(s ) (in particular: the species, the quality, the quantity, the destination, the value, the geographical origin, the time of production etc.);
• Consisting exclusively of the form imposed by the nature or function of the product, giving it its substantial value.

The distinctive character of a sign may be intrinsic or, failing that, acquired through use.

• Intrinsic Distinctiveness

Inherently distinctive signs are those which, as such, are spontaneously capable of fulfilling the essential function of a trademark.

Several degrees of distinctiveness can be distinguished:

• Arbitrary signs, i.e. those that have no perceptible link with the product(s) and/or service(s ) in question: APPLE for electronic devices, ORANGE for cell phone services, etc.
• Signs that are evocative, but nevertheless capable of performing the essential function of a trademark: for example, LE FRENCHY to designate perfumes and cosmetics (Cour d’appel de Paris, September 22, 2020, No. 19-07.389), INFUZ to designate, inter alia, herbal teas and other beverages (EUIPO, November 20, 2019, Case C-28/582).

If a sign is composed solely of verbal elements that are not very distinctive with respect to the product(s) and/or service(s ) concerned, it may be appropriate to associate these terms with a distinctive figurative element (stylized writing, insertion of a logo , etc.) in order to increase the distinctiveness of the whole.

However, the Intellectual Property Offices, in particular the INPI for French trademarks, are becoming increasingly strict in their assessment of the distinctiveness of a sign and frequently refuse to register trademarks that are considered unprotectable.

• Distinctiveness acquired through use

Article L.711-2 of the Intellectual Property Code provides in its last paragraph that ” In the cases provided for in 2°, 3° and 4°, the distinctive character of a trademark may be acquired as a result of the use that has been made of it. “

Also, in certain cases, the use of a sign initially devoid of any distinctive character may enable it to perform the essential function of a trademark, namely to be perceived by the consumer as an indication of the commercial origin of the product(s) and/or service(s ) in question.

It is settled case law that proof of such an acquisition can be provided by any means and that it must, in particular, make it possible to determine the market share held by the trademark, the intensity, geographical extent and duration of the use of this trademark, the extent of the investments made by the company to promote it and the proportion of the interested parties who identify the product(s) and/or service( s) as originating from a specific company thanks to the trademark (ECJ, May 4, 1999, Case. C-109/97; Cour d’appel de Paris, February 27, 2018, No. 16-14.398).

In contrast to the distinctive character acquired through use, there is also the case of trademarks that were initially intrinsically distinctive but have become the usual designation of the product(s) and/or service(s ) in question and which therefore lose their capacity to fulfill the essential function of a trademark. This is the case of the degeneration of a brand (FRIGIDAIRE, THERMOS, BOTOX, VINTAGE…).

Point of law

Article L.711-2 of the Intellectual Property Code provides that:

“The following may not be validly registered and, if registered, are liable to be declared null and void

[…]

(2) a trademark that is devoid of distinctive character.”

Point of jurisprudence

The INPI, competent since April 2020 in matters of trademark nullity, had to rule on the distinctiveness of the word trademark LES SAUNIERS DE L’ILE DE RE to designate ” sel de l’Ile de Ré, Fleur de Sel de l’Ile de Ré”, in the context of a nullity action based on the lack of distinctive character.

In the light of the evidence filed by the owner of the contested trademark, the Office considered that the sign is devoid of intrinsic distinctiveness, but that it has nevertheless acquired a distinctive character as a result of its use: ” It is clear from an overall assessment that the owner of the contested trademark has demonstrated intense and long-term use, making him an important player in the market for traditionally harvested salt. “(INPI, February 25, 2022, decision n°NL-21-0054)

The Bouchara Law firm assists you in particular in :

• Prior art searches prior to trademark registration;
• The strategy of trademark registration, namely: the determination of the sign with regard to the requirements relating to its distinctiveness, the drafting of the wording of the product(s) and/or service(s ) subject to registration, and the choice of the registration territories;
• The preparation and filing of the trademark application(s) with the competent offices in France and abroad(INPI for French trademarks, EUIPO for European Union trademarks etc.);
• Monitoring the registration process;
• Analysis and processing of official notifications issued by the Office or third party objections , if any;
• Once the trademark is registered, the transmission of the Certificate of Registration ;
• The management of the trademark during its entire period of protection (renewal of the registration at its expiry, registration of all changes that would affect the ownership or the scope of the trademark etc.);
• Monitoring your brands;
• The protection and defense of your trademark rights in the context of any pre-litigation or litigation action and in particular: opposition proceedings,infringement proceedings, trademark nullity proceedings;
• Trademark revocation actions (for failure to use or degeneration), both as plaintiff and defendant.