On 7 June 2018, the Paris court of first instance reiterated that the filing of a trade mark does not constitute an act "in the course of trade" within the meaning of article 9 of the Regulation (EU) 2017/1001 of 14 June 2017 on the European Union trade mark, so that it cannot constitute an infringing act (No. 16/00463).

L'Oréal is the owner of the French trade marks NUTRILOGIE No. 96 615 889, DERMOLISS No. 3 101 658, HYDRA SENSITIVE No. 3 614 425 as well as of the European Union trade mark HYDRA SENSITIVE No. 7435431, all trade marks designating class 3 goods.

Guinot creates beauty products which are exclusively marketed within its international network of beauty institutes.

In 2015, it came to the attention of L'Oréal that Guinot:

  • filed the French and European Union trade marks NUTRILOGIC for cosmetics and skincare products and was using this sign for body balms
  • had been using the sign "HYDRA SENSITIVE" since 2010 for a range of skincare products
  • was marketing cosmetic products under the name "DERMA LISS".

L'Oréal filed three separate actions against Guinot, aiming to cancel its NUTRILOGIC trade mark and obtain a finding of infringement of L'Oréal's French trade marks HYDRA SENSITIVE and DERMOLISS. As counterclaims, Guinot filed an invalidity and a cancellation action in relation to the French trade marks HYDRA SENSITIVE and DERMOLISS.

The Paris court of first instance held that the goods marketed by Guinot under the sign "NUTRILOGIC" were identical to the ones designated by L'Oréal's NUTRILOGIE trade mark. The judges specified that the fact that L'Oréal's products are intended for women whereas Guinot's products are intended for men is irrelevant.

In the same way, the fact that the products are marketed in different channels of distribution and that they do not have the same compounds is irrelevant as the only thing that matters is the identical or similar character of the goods, "without taking into account the specificities of each good".

With respect to the signs, the Paris court of first instance held that the signs were highly similar, thus creating a likelihood of confusion.

Interestingly, the first instance judges noted that L'Oréal's NUTRILOGIE sign is used "as a trade mark" (that is, to designate goods and services) "even if it is placed under a VICHY umbrella brand". The court added that the fact that the parties' umbrella marks are different does not mitigate the likelihood of confusion.

However, citing the "Arsenal" decision issue by the Court of Justice of the European Union (C-206/01, 12 November 2002, Arsenal Football Club Plc vs Matthew Reed), the first instance court held that the filing of a trade mark is a mere act that is preparatory to the use of this sign in the course of trade.

The first instance judges considered that such act "is not made in relation to goods and services whose commercial origin has to be guaranteed to the public with whom the sign is not in contact". Therefore, the court concluded that this is not an infringing act and it does not cause a harm to the trade mark holder in any case.

Finally, the judges cancelled L'Oréal's French trade marks HYDRA SENSITIVE and DERMOLISS, considering that these terms are descriptive in relation to the designated goods, regardless of the fact that these signs consist of neologisms.

Although the issue of whether or not the filing of a trade mark constitutes an infringing act is still debated by litigants, the Paris court of first instance clearly takes the side of the absence of a use in the course of trade (and thus of infringement), notably confirming a decision issued several months earlier, on 22 March 2018 (Paris Court of First Instance, 22 March 2018, Multiburo SA vs OCP Finance et al., No. 2017/09611).

Paris Court of First Instance – 7 June 2018 – case No. 2016/00463 – "L'Oréal vs. Guinot"