The French Supreme Court confirmed a lack of distinctiveness in the term “argane,” which constitutes the necessary and generic designation for hygiene and skincare products covered by the trademark. (CCass, Com., SAS Pierre Fabre dermo-cosmétique c/ Sté Clairjoie, 6 May 2014, No.13-16470)
In 2010, Pierre Fabre, owner of the “Argane” trademark since 1983, accused the company Clairjoie of counterfeiting the trademark “Karité-Argane” through commercial usage. In its defense, Clairjoie requested for the trademark “Argane” to be cancelled due to fraudulent filing and a lack of distinctiveness.
The Court of Appeals maintained the judgment of the Court of first instance and upheld the cancelation of the trademark. The Court affirmed that “Argane” is not a neologism which gives the term “argan oil” a feminized dimension, but rather a word of Arabic origin.
The defendant company argued that the judges were confused in differentiating between the evocative and the distinctive characters of the trademark, that no reference was made to consumer perception of the trademark and that the generic and necessary character of the trademark had not been established.
However, the French Supreme Court rejected the arguments of Pierre Fabre, stating that the Court of Appeals rightly decided the issue in referring to the clientele of the products of the brand. The Court also reiterated that the chosen term, also spelt as “argan” and designating a tree or shrub as well as its fruit, used in the manufacturing of soap, “constituted the necessary and generic designation of a plant substance used for hygiene and skin care which should have remained freely available to actors of the industry wishing to include it in their products.” Accordingly, it asserted that “the term was merely descriptive of the constituents of the product covered by the trademark”, thence justifying the cancellation of the latter.
This judgment puts an end to 30 years of use of the mark “Argane” but most importantly, emphasizes a heightening of the judges’ rigid approach with regards to the descriptive character of a trademark, by underscoring its lack of distinctiveness which was not obvious due to the divergence in pronunciation. Furthermore, the term “argane” is seldomly used. This decision also raises the delicate question of the difference between the evocative nature of a trademark and its lack of distinctiveness. Finally, this decision casts a doubt on the requirements for acquiring distinctiveness through the use of the trademark. Indeed, if such a lifespan and such frequent and intensive exploitation of a trademark do not suffice to grant distinctiveness to “Argane”, then what conditions must be satisfied?