Out-Law Analysis | 22 Sep 2017 | 11:48 am | 2 min. read
Fast food restaurant chain Quick has owned the international trade mark for Giant for fast food products since 2006 and used it to promote a range of hamburgers. In 2011 fresh food manufacturer Sodebo filed for and began using the French trade mark Pizza Giant Sodebo to market a range of pizzas under the name Pizza Giant.
Quick filed trade mark infringement and unfair competition claims against Sodebo in 2012 for the filling and the use of the trade mark, and the commercialisation of a range of pizzas under that name.
In 2013, the Paris Court of First Instance ruled that the trademark Giant was invalid and dismissed all Quick's claims, including that for unfair competition.
That decision was overruled in 2015 by the Court of Appeal which considered that the trademark was valid. According to the Court of Appeal, the English word Giant would be understood by French consumers as meaning big or enormous. The word was therefore generally and impersonally suggesting the dimensions of the food. This would create a positive, indirect and abstract image of the product which would not directly tell the consumers about the determinant characteristics or qualities of the goods. The name Giant was therefore considered to be purely evocative.
The dispute was brought before the French Supreme Court by Sodebo which denied all Quick's claims.
In a brief and clear decision, the French Supreme Court ruled that a trade mark that only designates the characteristics of a product or service is not distinctive and therefore not valid, regardless of whether the characteristic is an essential element from a commercial perspective or a secondary one.
The rationale of the French Supreme Court ruling is understandable. It quashed the Court of Appeal decision because that decision contradicted French legal provisions by stating that only the determinant characteristics of a product or service should be taken into consideration when assessing the distinctive character of a trade mark.
However, one might fear that the French Supreme Court's decision could be extensively interpreted as meaning that any evocative and laudatory trade mark or any sign with a positive message in relation to a product or service will be regarded as invalid on those grounds.
The French Supreme Court also dismissed the unfair competition claim as it said the mere fact of commercialising a range of products under various recipes does not constitute an act of unfair competition in itself.
This ruling is to be welcomed as free competition allows a stakeholder to imitate a product and service of a competitor provided there is no intellectual right protecting that product or service and there is no likelihood of confusion. In the present case, Quick would have had to show a likelihood of confusion in order to be successful in its unfair competition claim.
Léonore Isnard is an intellectual property expert with Pinsent Masons, the law firm behind Out-Law.com