Who: The INTERNATIONAL SUPERMARKET STORES, ATAC and MARKS AND SPENCER FRANCE LTD
Where: Tribunal de grande instance », Paris, France – court with exclusive jurisdiction in trademark matters
When: 14 April 2016
Law stated as at: 6 June 2016
What happened:
The INTERNATIONAL SUPERMARKET STORES company (hereafter “ISMS”) owns one of the biggest supermarkets in France and uses the Community word marks “SIMPLY MARKET” and “SIMPLY” in respect of various food products. ISMS also uses the “SIMPLY MARKET” brand as a trading name via its affiliate company, ATAC.
MARKS AND SPENCER FRANCE LTD (hereafter “M&S”) competes with ISMS in the French food retail market in particular, and the latter noticed that M&S had been using the term “SIMPLY” to refer to its discounted food products in France.
This was identical to the ISMS’s registered “Simply” trademark for food supplies and retail services. ISMS and ATAC thus initiated proceedings on 25 September 2014 against M&S on the grounds of trademark infringement, unfair competition and parasitic competition.
M&S made a counterclaim and challenged the validity of ISMS’ trademarks. M&S argued that both trademarks were not distinctive, within the meaning of articles 7§1 b) and c) of Regulation (EC) No 40/94 of 20 December 1993 on community trademarks, and that their respective filings should be cancelled.
More specifically, M&S argued that the trademarks were laudatory and that the French audience would understand them as describing an essential characteristic of the services in question: their simplicity.
The court agreed with M&S and cancelled both trademarks’ registrations in Class 35 (“Food supplies retail services”) judging that:
– the French audience has a basic understanding of the English language, and
– as a result, the relevant audience would understand the term “SIMPLY” and “SIMPLY MARKET” as being laudatory terms promoting and describing the quality of the services, and not as an indication of commercial origin.
Therefore, the court rejected ISMS’ and ATAC’s trademark infringement claims.
With regards to the unfair and parasitic competition claims, the court ruled that there was no confusion between the “SIMPLY MARKET” trading name and M&S’ “SIMPLY M&S” term in the consumers’ minds, since:
– the “SIMPLY M&S” sign was used in a different colour and font than the “SIMPLY MARKET” sign,
– the “SIMPLY M&S” sign used displayed the “M&S” part in a slightly bigger font,
– the use of the word “SIMPLY” was merely perceived as promotional, and thus,
– only the “M&S” part was indicative of the origin of the products and was thus determining the consumers’ purchase.
The court rejected all of ISMS’ and ATAC’s claims on this ground, and ordered them to pay €30,000.00 to M&S.
The claimants have appealed this decision.
Why this matters:
This decision highlights issues relating to trademark registrations of English terms in other European jurisdictions.
Whilst the court acknowledged that the relevant audience (French consumers) did not have a full understanding of the English language, they would have an understanding of “everyday” English, and that the words “simply” and “market” would easily be understood. Since the French audience is likely to understand those terms, their use can be descriptive and their interpretation by the French audience can be assessed by the judges.
Use of a foreign language, and in particular of the English language, does not guarantee that the sign used will be distinctive! Businesses implemented in France should be mindful of that when using “everyday” English terms as trademarks, trade names or otherwise towards a French audience.
