Advertising represents an important economic value for companies that needs to be protected, and the same goes for the idea of advertising, which is however much more delicate to invoke in the context of a dispute. Indeed, as a matter of principle, ideas are free to travel, and only the forms in which an idea is expressed can be protected.
However, it is theoretically possible for a company to protect its advertising ideas, in particular through an action for unfair competition or parasite, but this will depend on the specific circumstances of the case.
In March 2012, PEPSICO France began promoting one of its TROPICANA fruit juices through an advertising film, which was widely broadcast, ending with a close-up of an orange with the TROPICANA trademark on it.
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ANDROS then sued PEPSICO on the basis of unfair and parasitic competition. Indeed, the ANDROS company considered that by reproducing this orange at the end of its advertising spot, the PEPSICO company had committed acts of unfair and parasitic competition to its detriment.
The ANDROS company invoked, in order to win its case, the prior and uninterrupted use for almost 25 years of a fruit on which the ANDROS trademark was affixed to promote its fruit juices and fruit desserts.
However, the Commercial Court of Nanterre, by a judgment rendered on October 23, 2012 (T. com. Nanterre, 6th ch., October 23, 2012, n°2012F01645), dismissed the ANDROS company from its claims.
The trial judges found that the orange reproducing the ANDROS trademark was an advertising idea that could not be qualified as original and personaland was therefore not of a nature to “to give ANDROS a “monopoly on its use, even reduced to the field of fresh fruit juices “.
The Court also considered that ” by its banality, it has no distinctive power for the benefit of ANDROS and is not attached to know-how, intellectual work or investments specific to ANDROS.
ANDROS then appealed this judgment. The question that arose was therefore whether the use of an advertising idea could be condemned as unfair competition.
The debate was not about the protection of this advertising idea under copyright law, since it is established case law that ” ideas are free to travel “. The question of the originality of this advertising idea was not intended to be addressed in this case either.
To win a case on the basis of unfair competition, it is necessary to prove that the advertising idea is distinctive and arbitrary and that the use of this idea by a competitor creates a risk of confusion.
An arbitrary and distinctive advertising idea
The Court of Appeal held (CA Versailles, 12th ch., February 18, 2014, n°12-07318), contrary to the Commercial Court, that the advertising idea consisting of associating a fruit and the trademark of a manufacturer of the finished product is not usual, the company having been the first to make it and this since 1988, and is then quite distinctive and arbitrary when it concerns fruit juice.
The Court also rejected PESPICO’s argument that the frequent presence of a label on a fruit to indicate the name of the fruit or its producer was not a relevant use.
In order to recognize the arbitrary and distinctive character of this advertising idea, the Court of Appeal took into consideration the plaintiff’s industrial status, as well as the nature of the final product, which is not a simple fruit but a product derived from this fruit, namely fruit juice.
The Court of Appeal thus wanted to grant protection to this idea because it is true that the advertising idea constitutes a real value for a company and that, apart from unfair competition, it has no other means of defending itself.
In any event, if the Court of Appeal recognized that this advertising idea was distinctive and arbitrary, it was still necessary that the use of an orange with a trademark be likely to cause confusion in the mind of the consumer.
Misconduct by creating a risk of confusion
The characterization of a risk of confusion was delicate in this case. Indeed, this case opposes two major players in France on the fruit juice market who have managed to distinguish themselves and create different identities.
Thus, these two players do not have the same advertising communication practices and the themes addressed in their respective ads are not similar.
The use of an orange in the TROPICANA advertisement was limited to the end of the disputed commercial and did not appear on the finished products.
Last but not least, the advertising idea consists in the reproduction of a trademark on a fruit. However, the essential function of the trademark is to guarantee the consumer the origin of the products.
Both TROPICANA and ANDROS are well-known trademarks that consumers know and encounter on a daily basis.
In spite of all these elements differentiating the two companies, the Court of Appeal considered that the Court of First Instance’s decision was contrary to the Court’s view:
- The Andros company had pertinently noted ” that it does not matter that the advertising idea is only implemented at the end of the film […] as long as this circumstance does not cause it to lose its distinctive character and that, on the contrary, this idea plays an essential role as a signature and will be remembered by the consumer “;
- and that ” the fact that the marks on the fruit are different, ANDROS on the one hand and TROPICANA on the other, does not obviate the likelihood of confusion produced by the visual resemblance in the mind of the reasonably attentive and informed consumer.
According to the Court of Appeal, the essential function of the trademark is not sufficient to rule out a risk of confusion between two visuals of an orange, each bearing a different but well-known trademark.
The Court of Appeal therefore condemned the company PEPSICO for having distributed an orange with the trademark TROPICANA on it.
This broadcast was, according to the Court, a reiteration of an arbitrary and distinctive advertising idea of ANDROS that creates a risk of confusion in the mind of the reasonably attentive and informed consumer.
Following this decision, the company PEPSICO appealed to the Court of Cassation against the decision of the Court of Appeal, arguing that ” the mere fact of using a competitor’s advertising idea without using the form in which it was expressed is not in itself a fault “.
However, the Court of Cassation rejected PEPSICO’s appeal in a decision dated November 24, 2015 (Cass. Com., November 24, 2015, No. 14-16.806), and in which it confirmed the decision of the Versailles Court of Appeal, holding in effect that ” the similarities between the visuals in question give rise to a risk of confusion in the mind of a reasonably attentive and informed consumer, which the difference in the marks affixed does not mitigate. “
Consequently, an advertising idea can indeed be protected by unfair competition, independently of copyright, as long as it is demonstrated, on the one hand, that the advertising idea is arbitrary and distinctive and, on the other hand, that the litigious act creates a risk of confusion.
