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Who can “steal” the orange used in Andros advertising?

By Lise Rahou - Expertise Blog

Advertising represents an important economic asset for companies that needs to be protected. The same goes for an advertisement idea which is much harder to use and prove in litigation.

In this case, the plaintiff - the company ANDROS - sought to sue the defendant company PEPSICO following the airing of a commercial that included an orange labeled with the trademark TROPICANA.

Indeed, ANDROS considered that by reproducing the use of this orange in their commercial, PEPSICO had committed acts of unfair competition and free-riding at its expense.

In support of their argument, the Plaintiff brought the court’s attention to the fact that a fruit had been previously and extensively used by ANDROS in promoting their products.


However, in its judgment on 23rd October 2012, the Commercial Court of Nanterre at first instance found in favor of the Defendants, holding that the orange reproducing the trademark ANDROS was an advertising idea which could not be qualified as original and personal. As such, this idea did not give rise to the Plaintiff having a ‘‘monopoly’’ over its use.

ANDROS appealed the decision, the question this time being the extent to which using an advertising idea could constitute an act of unfair competition.

Therefore, the crux of the case did not revolve around the protection of the idea under authors' rights law because case law authority makes it clear that ideas cannot be owned. Similarly, the question of the relevance of the idea was not relevant in this case.

To succeed on a basis of unfair competition, it is necessary to prove that the advertising idea is distinctive and unique and that the reproduction of this idea by a competitor runs the risk of confusion.

A unique and distinctive advertising idea

Overruling the Commercial Code, the Court of Appeal held that the advertising idea of associating a fruit with the trademark of a finished product was unusual, unique and distinctive for the fruit juices in question.

The Court also rejected the argument concerning the fact that fruit often appears on labels to indicate the name and producer of the fruit.

In recognizing the unique and distinctive character of this advertising idea, the court took into consideration the industrial quality of the Plaintiff as well as the nature of the finished product which is not the fruit itself, but instead a product deriving from the fruit, namely the juice.

The Court therefore wanted to accord this idea a level of protection because it is true that an advertising idea is an inherent asset for a company and that outside of unfair competition, the company has no other means of defending itself.

In any case, though the Court held that this advertising idea was unique and distinctive, it was still necessary to demonstrate that the reproduction of the orange with the trademark was of such a nature as to create a risk of confusion in the mind of consumers.

Liability for creating a risk of confusion

Proving the risk of confusion in this case was a tricky feat. Indeed, the opposing parties in this case were two large French fruit juice manufacturers who over time were successful in making themselves stand out and forging their own identities on the market.

As such, neither party used the same commercials nor was the subject of their advertising materials similar. The reproduction of the orange in the TROPICANA trademark was only at the end of the contested advert and did not appear at all on the finished products.

In the end, it was held that the advertising idea here was in fact a reproduction of the trademark over the fruit, even though, as it has been well established, the purpose of a trademark is to guarantee the product’s origin to consumers.

Both TROPICANA and ANDROS are famous trademarks that consumers know and encounter on a daily basis.

In spite of all the differentiating elements between both companies, the Court of Appeal deemed that “the fact that the trademarks labeled on the fruit are different, ANDROS on the one hand and TROPICANA on the other, the visual similarities present here do not eliminate the risk of confusion for the reasonable and informed consumer.’’

According to the Court, the essential function of the trademark is not enough to remove the risk of confusion between two the two images of oranges which though different are both representative of famous trademarks.

The Court of Appeal therefore found PEPSICO liable for having used the orange with TROPICANA written on it. According to the Court, this use was the reproduction of a unique and distinctive advertising idea which created a risk of confusion for the reasonable and informed consumer.

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