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The trademark ARGANE of PIERRE FABRE cancelled due to lack of a distinctive sign

09
MAY.
By Vanessa Bouchara - Expertise Blog

On 6th May 2014, the Commercial Chamber of the Court of Cassation rejected an appeal from LABORATOIRE PIERRE FABRE following a decision by the Paris Court of Appeal concerning the company CLAIRJOIE.

CLAIRJOIE operates in the cosmetic industry using the trade name “KARITE-ARGANE”. On the alleged basis that this use undermines its rights, LABORATOIRE PIERRE FABRE DERMO-COSMETIQUE sued CLAIRJOIE for infringement of its trademark ARGANE. CLAIRJOIE’s counterclaim was that the ARGANE trademark should be cancelled for its lack of distinctiveness.

The Court of Appeal of Paris upheld the judgment of the Court of Grand Instance on 17th December 2010 in which the court granted our request and held the ARGANE trademark to be cancelled for its lack of distinctiveness.

In arriving at its decision, the court considered that:

  • At the time the trademark in question was filed, the term ARGANE constituted the necessary and generic designation of a natural substance used for hygiene and skincare. As such, it had to remain available for use by those involved in the sector who wanted to use it as an ingredient in their products.
  • At the same time, it was inferred that ARGANE, being indicative of an essential quality of hygiene and skincare products (excluding products relating to scalp treatment) that it was seeking to designate, was incapable of fulfilling the essential purpose of a trademark, i.e. enabling the average and reasonably informed consumer to clearly distinguish products covered by the trademark from those of another company without confusion.

The Court of Appeal therefore moved to cancel the French trademark ARGANE filed on 2nd April 1983 and for the products covered under it in categories 3 and 5.

This case raised a significant issue because argan is an extremely common ingredient used in the cosmetic industry.

In rejecting the appeal by PIERRE FABRE DERMO-COSMETIQUES on 6th May 2014, the Commercial Chamber of the Court of Cassation held that:

‘‘the trademark in question is fully comprised of the word ‘‘argan’’, a word of Arabic origin also spelt as ‘‘argan’’ which has been used in French dictionaries as well as in several works written in French since the 19th century to designate a tree or shrub as well as the fruit from which ‘‘argan oil’’ or ‘‘argane oil’’- long used in soap making – comes from. At the time the trademark in question was registered, this term constituted the necessary and sufficiently generic designation of an organic substance used for hygiene and skincare. As such, it must remain freely available to those wishing to use it as an ingredient in their products. The Court of Appeal, taking into consideration the interests of the wider public, has legally justified its decision. The arguments put forward have not been adequately substantiated.’’

See also: How can an ordinary trademark become distinctive through use?

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