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The brand ARGANE of PIERRE FABRE cancelled…

Vanessa Bouchara

Updated on January 16, 2022

PIERRE FABRE’s ARGANE trademark cancelled for lack of distinctive character

By Judgment of March 6, 2014, the Paris District Court declared the GARUM and GARUM ARMORICUM trademarks invalid for lack of distinctive character.

In a January 30, 2013 decision, the Paris Court of Appeal ruled on the validity of Pierre Fabre Dermo-cosmetics’ French trademark registration “ARGANE” and cancelled it for lack of distinctiveness.

This case began when Pierre Fabre, owner of the French word trademark “ARGANE” registered on April 22, 1983 under number 1 234 523, sued CLAIRJOIE for infringement for marketing cosmetic products under the designation “KARITE-ARGANE”.

Since 1985, Pierre Fabre Dermo-cosmetics has been marketing under the trademark name ” Argane “several lines of cosmetic products composed of a ” rare essence from the argan tree “(TGI of Paris, February 17, 2010, n°09/12639), a fruit tree endemic to the southern region of Morocco and Algeria. The company Pierre Fabre was the first laboratory to launch such products, and was since that date the “leader on the French market for cosmetic products based on argan oil ” (TGI Paris, February 17, 2010, No. 09/12639).

Thus, Pierre Fabre Dermo-cosmetics accused CLAIRJOIE of infringing its trademark rights over the name ARGANE by creating a risk of confusion with its own products marketed under the trademark “ARGANE”.

However, the company CLAIRJOIE opposed the company Pierre Fabre Dermo-cosmetics the nullity of its trademark “ARGANE” for lack of distinctive character, in particular because of the meaning of the term “argane”, of which the trademark is composed. Trademark which refers to the fruit of the argan tree from which is extracted an oil regularly used in cosmetic products for its virtues, including Pierre Fabre products.

In fact, under article 3 paragraph 2 of the law of December 31, 1964 on trademarks and service trademarks, law applicable to the trademark “ARGANE”: ” Those which consist exclusively of the necessary or generic designation of the product and service or which contain indications likely to mislead the public may not be considered as trademarks [et] Those that are composed exclusively of terms indicating the essential quality of the product or service, or the composition of the product. “(Rule now enshrined in Article L.711-2 of the Intellectual Property Code)

It is in this sense that many trademarks have been cancelled for lack of distinctiveness over the years, such as Elle & Vire’s “Beurre Tendre” trademark for butter (Paris Court of Appeal,4th Chamber, February 9, 2000, No. 1999/07110), Knorr’s “Les soupes de la forme” for soups intended to maintain good health and physical fitness (Paris Court of Appeal, June 9, 1993, PIBD 1993, 553, III-624), Central Optics’ “Lentilles” for optical products (Cass. Com, May 16, 2018, n°16-15.115), or “Texto” for SMS services (Paris Court of Appeal, September 23, 2009, n°08/02.816), and many others, as long as they described even one of the characteristics of the products for which they had been deposited.

It is thus without much surprise that the Court of Appeal of Paris considered :

  • On the one hand, since the term “ARGANE” already constituted at the date of the the necessary and generic designation of a plant substance used for hygiene and skin care, that the term “ARGANE” was to remain at the free disposal of the actors of the economic activity concerned who wished to introduce it in the composition of their products; and
  • On the other hand, still as of deposit that the term ARGANE, likely to be perceived as indicating the essential quality or composition of products for hygiene and skin care, except for the scalp, which it was intended to designate, it was therefore unfit to fulfill the essential function of the trademark for such goods, namely to enable the average consumer, normally informed and reasonably advised, to distinguish without possible confusion the goods covered by the trademark from those of another company.

The Court of Appeal consequently confirmed the first instance judgment (TGI de Paris, February 17, 2010, n°09/12639) having declared ” invalid, for all the goods covered in classes 3 and 5, registration No. 1 234 523 of the French word trademark “ARGANE” filed on April 2, 1983 ” (Paris Court of Appeal, January 30, 2013, 11/01355) for lack of distinctive character to designate cosmetic products made from Argan.

Subsequently, Pierre Fabre Dermo-cosmetics appealed to the Supreme Court. However, the Court of Cassation rejected the appeal in a decision dated May 6, 2014 (Cass. Com., May 6, 2014, No. 13-16.470), holding, in particular, that the trademark involved, ARGANE, was ” exclusively composed of the term “argane”, a word of Arabic origin, also spelled “argan”, which has been listed since the 19th century in French language dictionaries intended for the general public and in various works written in French, to designate a tree or a shrub as well as its fruit from which is extracted an oil, called “argan oil” or “argan oil”, used, from that time, for the manufacture of soap; “.

The Court of Cassation thus considered, as did the Court of Appeal, that this term constituted the necessary and generic designation of a plant substance regularly used in cosmetic products for the skin, and should remain at the free disposal of the actors of the economic activity concerned wishing to introduce it in the composition of their products. The decision of the Paris Court of Appeal has been confirmed, and Pierre Fabre’s ARGANE trademarks remain cancelled.

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