Auchan and M&S fight for ‘Simply’ trademark

The International Supermarket Stores company (ISMS) and ATAC, both owned by Auchan, recently filed a trademark suit against Marks and Spencer France Ltd. for infringing on their ‘Simply Market’ and ‘Simply’ trademarks used for goods of a consumable nature.

In September 2014, the Auchan subsidiaries noticed that M&S had been using their trademarked term ‘Simply’ for their discounted food range in the French market and therefore filed a lawsuit against them for unfair competition as well as trademark infringement.

However, M&S filed a counterclaim against them questioning the distinctiveness of their trademarks and declaring that their applications should be cancelled. Furthermore, in their defense, M&S argued that the trademarked term in question is merely descriptive and therefore it does not act as a source identifier.

The French court ruled in favour of M&S stating that since the French audience has at least elementary knowledge of the English language that they would see the terms ‘Simply Market’ and ‘Simply’ as being purely descriptive. Therefore they decided to cancel the trademark registrations and reject the claims of trademark infringement.

Furthermore the court ruled that there was no evidence of unfair competition since ‘Simply M&S’ and ‘Simply Market’ cannot easily be confused by a consumer due to the marks’ differences in colour and font and the fact that the term ‘Simply’ was only used in a promotional nature and was not used as a source identifier.

According to Marketing Law the Auchan subsidiaries were ordered to hand over €30,000.00  to M&S by way of compensation.

This decision has been appealed so we shall have to wait for the outcome.

A descriptive name cannot be used successfully as a trademark and the Auchan case has demonstrated that even when the term is in a different language, if it can be understood by the locals it would still have the same descriptive function and therefore cannot act as a source identifier.

The three main types of name that can be successfully trademarked are suggestive, arbitrary or fanciful names and these should always be considered before attempting to register any other type of mark.

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