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Cancellation of the trademarks GARUM and GARUM ARMORICUM for lack of distinctive character

17
APR.
By Vanessa Bouchara - Expertise Blog

In its judgment on 6th March 2014, the Court of Grand Instance in Paris cancelled the trademarks GARUM and GARUM ARMORICUM on the grounds that they lacked distinctive character.

The company COMPAGNIE GENERALE DE DIETETIQUE creates and manufactures food supplements and dietary products. It created, under the name GARUM ARMORICUM, an anti-stress food supplement which was sold under the umbrella brand STABILUM.

It proceeded to register several both French and EU trademarks containing the terms GARUM and GARUM ARMORICUM.

The company noticed that an Italian company by the name of CLAVIS had used its trademarks as well as its user guides, and as such, it sued CLAVIS on the grounds of trademark infringement and unfair competition.

In a counterclaim, CLAVIS sought the Court to annul the trademarks on the basis that they lacked distinctive character.

The validity of the GARUM and GARUM AMORICUM trademarks

The Court noted that the term GARUM is a Latin word designating an autolysate from the sea which comes from fish viscera and is used today in both condiments and medications. Since ancient times, its health benefits have been well known. AMORICUM only indicates the geographical location of the fish producing the ingredient.

As a result, the term GARUM only describes the essential quality of the products and services targeted under Class 25, which was as such at the time the trademarks were registered.

The submissions on the grounds of trademark infringement were therefore rejected. As such, CLAVIS was legally able to use this term which was not held to have a distinctive character and as such must remain available to all.

The unfair competition arguments

As far as the arguments put forward by COMPAGNIE GENERALE DE DIETETIQUE that CLAVIS was acting against the rules on unfair competition, the Court held that the mere fact of using the essential ingredient of the product sold cannot qualify as a wrongful attitude sufficient to constitute unfair competition. However, what can be held to amount to unfair competition practices is the use of studies commissioned and financed by a competitor on its website in order to promote another’s product.

It was on this latter basis that CLAVIS was ordered to pay €30,000 in damages to COMPAGNIE GENERALE DE DIETETIQUE.

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