Refusal of a sign consisting of non-distinctive English terms for a French trademark
25.03.2019
In a judgment dated 15/02/2019, the Paris Court of Appeal confirmed the refusal by the French Office of the French trademark application "PAPERSCENT" which had been filed to designate in particular "Fragrances and aromas for olfactory strips made of paper, cloth or similar materials; Olfactory strips of paper; Olfactory samples distribution services ".
Article L 712-7 of the Intellectual Property Code provides that:
"An application for registration shall be rejected:
(b) if the sign can not constitute a mark pursuant to Articles L 711-1 and L 711-2, or be adopted as a mark pursuant to Article L 711-3 ".Article L 711-2 states that
" The following shall not be of a distinctive nature:
(b) Signs or names which may serve to designate a feature of the product or service, particularly the type, quality, quantity, purpose, value, geographical origin, time of production of the goods or furnishing of the service".Finally, according to Article L 711-3, a sign may not be adopted as a mark or mark element:
"(c) Signs liable to mislead the public, particularly as regards the nature, quality or geographical origin of the goods or services".
The PAPERSCENT trademark application consists of two English words PAPER (“PAPIER” in French) and SCENT (close from “sentir” in French).
The Court notes that these words, come from the current English vocabulary, are close to French and perfectly understood by the average French consumer.
The combination of the two terms PAPER and SCENT does not create a set having a meaning different from their simple juxtaposition and is well understood as scented paper or perfumed paper.
The Court adds that it does not matter, with regard to the French public, that the juxtaposition of the two terms is grammatically incorrect in English and that the expression perfumed paper or scented paper should be said SCENTED PAPER and not PAPER SCENT.
The mark is therefore rejected because it describes exactly the designated products or directly complementary services. The mark is also rejected in that it designates fabric or other materials, the sign then being likely to be misleading within the meaning of Article L 711-3 of the Code of Intellectual Property.
