The Claimants, ISMS and ATAC are both members of the international food retailer and distributor group Auchan. ATAC, affiliate of ISMS, operates 2350 supermarkets throughout Europe under the trade name "SIMPLY MARKET", used as follows :
In September 2014, ISMS asked MARKS & SPENCER to cease its use of the following branding for a range of products available in its convenience stores:
ISMS then filed a claim against M&S for infringement of the two EUTM SIMPLY MARKET and SIMPLY under Article 9(1)(b) of Council Regulation (EC) 207/2009 and for unfair competition based on ATAC' trade names, before the Court of Paris.
M&S responded with counterclaims for revocation and invalidity of ISMS' trade marks.
The first issue to be addressed by the Court of Paris was about the scope of M&S' counterclaim. The Court had to decide whether M&S could claim invalidity for the entire trade mark or only in relation to the goods and services opposed by ISMS in its infringement claim.
The Court pointed out that this question was only subject to French procedure law, which provides that each claim/counterclaim should fall under the personal interest of the claimant. Thus, the M&S counterclaim was only found admissible for the goods and services on which ISMS based its infringement claim, as the others were not sufficiently linked to the case at hand.
In relation to the distinctiveness of the trade marks "SIMPLY" and "SIMPLY MARKET", the French Court considered that:
- "SIMPLY" and "SIMPLY MARKET" are easily and directly understood by French and English consumers.
- "SIMPLY" is a laudatory term as it describes the merits of the services which are seen as simply offered or executed. The Court considered that although such a term can be distinctive, in the case at hand, the consumer will only perceive "SIMPLY" as a qualitative assessment promoting the merits of the services and not as an indication of commercial origin.
- Thus, put together with "MARKET", the trademark "SIMPLY MARKET" will only be perceived as a promotional message, made of common terms, which does not indicate the commercial origin of the goods.
The Court also rejected ISMS' claim in relation to the distinctiveness of "SIMPLY MARKET" acquired by use, since the evidence provided was subsequent to its application.
Therefore, the EUTM "SIMPLY" n°5 410 998 and "SIMPLY MARKET" n°4 712 196 were both cancelled for the goods and services on which the initial claim for infringement was based on. (i.e.: retail services of foods supplies in class 35 for "SIMPLY" and various food supplies and beverages in classes 29, 30 and 32 for "SIMPLY MARKET").
Finally, the Court also rejected the claim of ATAC based on unfair competition for the infringement of its trade names. The Court considered that there is no likelihood of confusion between the signs at issue, since the consumer still perceives "M&S" as denoting the commercial origin of the goods and "SIMPLY" only as a promotional message assessing the quality of the goods.
By trying to prevent a competitor from using the wording "SIMPLY", the company ISMS partially lost its rights in the EUTM "SIMPLY" and "SIMPLY MARKET". The decision issued by the Court of Paris on 14 April 2016 shows how distinctiveness is assessed by national judges and reminds the owners of trade marks composed of generic or laudatory terms to be cautious before filing an infringement action.
With special thanks to Morgane Simon for her contribution to this article.
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