MARQUES]

CA Aix-en-Provence, 2e Ch., 7 juin 2018 (annulant la décision du Directeur général de l’INPI du 25 juillet 2017)

Article L. 711-2 of the Intellectual Property Code provides that: "The distinctive character of a sign of a nature to constitute a mark is assessed with regard to the goods or services designated. Are devoid of distinctive character:

(a) Signs or names which, in everyday or professional language, are exclusively the necessary, generic or usual designation of the product or service;

(b) Signs or designations which may be used to designate a characteristic of the product or service, including the species, quality, quantity, destination, value, geographical origin, time of production of the good or service the provision of service (...) » 

In other words, a sign, to be registered as a mark, must be distinctive, ie it must be perceived as a means of identifying the goods and services it designates and a means of distinction compared to competitors. This requirement is deemed not to be satisfied when the sign indicates the geographical origin of the goods and services

In this case, on 10 June 2016, the company already holding the L'Occitane mark for cosmetic products, registered under the same sign with the INPI a registration application for, inter alia, the products of the printing, leather goods, clothing and restaurant services. The Director of INPI considered that the sign filed was not distinctive and merely descriptive of the goods and services covered by the registration, originating from the Occitanie region. The applicant brought an action for annulment of that decision.

In its judgment, the Aix-en-Provence Court of Appeal held that the application for registration of the L'Occitane mark could not be rejected as descriptive and devoid of distinctive character only if that sign, which is a declension the name of the "Occitanie" administrative region, concerned products and services whose characteristic is to come from this region

However, the Occitanie administrative region has not been appointed since 28 September 2016, so it did not officially exist as such at the time of filing the application.

Moreover, in this case, it has not been established that the target public attributes the goods and services in question to a geographical origin in the Occitanie region.

Thus, the Court of Appeal concludes that the sign is distinctive. The L'Occitane brand does not evoke for the intended audience a direct link between the region and the products and services, so it can be registered.