When the marks fall in the public domain

July 25, 2017 – Jeremiah COURTEOUS

© AP – Sopalin, Kleenex, shopping Cart, Schotch, Fridge,…many brands are commonly used as common names

Like the shopping Cart, Piñacolada, Scotch tape and Frigidaire, brand become customary is the reverse of the medal success of the product or service. Considered as a common name, the brand dégénérescente
robs its owner of his rights. Jérémie Courtois, a lawyer of the firm Cornet Vincent Ségurel, explains the contours and nuances of the notion of the degeneration of brand.

The commercial chamber of the Cour de cassation, in a judgment dated march 1, 2017, is coming to give details on the contours of the degeneration of the mark because of the use by a third party. It refines the context in which the use of a mark is likely to contribute to its degeneration. This behavior is considered a fault, it is all the more timely to address the criteria leading to its degeneration.

Indeed, let us not forget that the brand is a guarantee of the value of the intangible capital of the organization and a development tool. The economic issues revolving around brands are therefore considerable. Therefore, it is essential to know how to recognize the use dégénérescent of its brand and put in place an appropriate procedure, as appropriate, to stop the use of wrongful, redress, and ensure a full and peaceful enjoyment of their rights, and this, without over-react, particularly in cases considered as non-faulty.

K-way, blue Card, Tupperware, Post-it, or Tipp-ex, many brands are commonly used as common names !

In the absence of reactivity, the forfeiture will be incurred. But, to the contrary, in the event of untimely actions, costs a non-negligible could be to bear. Through this judgment, the Court of cassation gives us a key to extra reading to find a perfect balance in the behavior to adopt.

The use of the trademark relate to goods or services associated

By this judgment, the Court of cassation considers that it does not contribute to the degeneration of the trade mark the use made of it as metaphor. Therefore, only the use of the mark as a designation of the product or service that it designates is at fault.

The criterion adopted by the Court of cassation to characterize the risk of degeneration appears to be that of the context, demonstrating sufficient correlation between the mark and the product or service that it designates.

To assess the risk of the sufficient link between the brand and its product, it should be put as the average consumer. So, in the spirit of the latter, the brand name replaces the name of the product, then the risk of degeneration is incurred.

Therefore, it is essential, during the legal monitoring of a portfolio of brand, identify what it is referred to by the citation of the trademark. In the case of a conceptualization of the latter, it will be important to demonstrate how this use may change the perception of the brand of the drive.

By this solution, the value of the brand is then consolidated : outside of the commercial context, the mere use lexical becomes a field of protection and defence of intellectual property.

A list exponentially

K-way, Bikini, blue Card, Chamallow, Tupperware, Lego, Velux, Kärcher, Sopalin, Kleenex, bus Shelters, Superglue, Post-it, or Tipp-ex, many brands are commonly used as common names !

A wikipedia page is regularly updated and establishes the list of marks used, or have been in the past, such as common names. It already has over a hundred.

Click here to access the list.

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