Use of a trademark to indicate the destination (L 713-6b) : Gillette

17.10.1998

L 713-6 : Registration of a mark shall not prevent use of the same sign or a similar sign as the necessary reference to state the intended purpose of the product or service, in particular as an accessory or spare part, provided no confusion existes as to their origin.



However, where such use infringes his rights, the owner of the registration may require that it be limited or prohibited. The American society The Gillette Company and the French society Gillette France are respectively titular of the trademarks "Sensor" and "Gillette" for razors and blades and are hereafter referred to as Gillette. The French society Parke Davis produces razors blades and signed in 1989 an agreement with Gillette to produce their patented blades. The French society Monoprix sold blades in 1996, produced by Parke Davis, under the trademark "Country" and with the mention "adaptable on Sensor razors". Case for Gillette * The 1989 agreement permitted to Parke Davis the production of the patented blades, not the production of adaptable blades and the use of their trademarks. * L. 713-6 does not apply because : - blades are not accessories or spare parts of a razor but the essential part, - the reference is not a necessary one because the indication of the razor type would have been sufficient, - a confusion existes as to their origin, because of the lack of origin mention and the use of the mention "adaptable on Sensor razors". Case for Parke Davis * The reference to "Sensor razors" was necessary, because the blades are adaptable only on those razors. * No confusion existes because of the trademark "Country" and of the term "adaptable". * Blades are sold separately so they are an accessory. Conclusion * A razor is constituted by two elements : a stick and a blade, none of these being an accessory. * Blades can be sold separately (and they are) so they can be considered as spare parts. * The produced blades correspond to the patented blades and therefore are intended to be used on the corresponding razors and only these ; this is why it is necessary to inform the public. * The blades packaging indicated the trademark "Country" in a very apparent manner, and the mention "adaptable on Sensor razors" was re-written on the back with the precision that "Sensor" is a trademark filed in the name of Gillette, so that no confusion is possible. * The term "Gillette" is not used as a trademark but as the name of the firm that is titular of the trademark "Sensor". * Gillette wants to exercise the right of the last paragraph of L 713-6 but does not develop an argumentation on this point, for example : - depreciation of the trademark, or - use of the trademark for a less quality-product. Art. L 713-6 applies to the blades adaptable on specific razors. No infringement is done by the mention "adaptable on Sensor razors" in this case. (The overall presentation of the packaging being very similar to the one used by Gillette, unfair competition was retained against Monoprix).