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Is the sign “SIMPLY” distinctive?

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13/06/2016

The Tribunal de Grande Instance de Paris has given judgment for Marks & Spencer in a trade mark dispute concerning the mark “SIMPLY”.

The claimant, ISMS, is a food retailer and distributor and the operator of a number of stores in France and elsewhere in Europe that trade under the name SIMPLY MARKET. There are apparently over 2000 of such stores in Europe operated by the claimant or its partners. It was the proprietor of an EU trade mark SIMPLY MARKET for food and drink goods and SIMPLY for retail services in food products. Marks & Spencer, which has been operating in France since 2011, sells products under the mark “SIMPLY M&S”.

The claimant instituted infringement proceedings, a decision which turned out to be ill advised when M&S counterclaimed for invalidity of the claimant’s two marks.

The key question as to validity was whether the marks SIMPLY and SIMPLY MARKET were descriptive. The Court made some interesting points on the word “simply”:

  • the average consumer in France could be taken to have “baccalaureat” (A-level equivalent) of English and would therefore understand the term “simply”
  • the word “simply” could be an adverb and it could also have a laudatory function
  • the fact that the word was complimentary or laudatory did not mean that it was incapable of being distinctive
  • however, the average consumer, faced with the term “simply” would immediately understand that he or she might benefit from services simply offered or executed and would perceive the sign as being exclusively a description of a quality of the services and not an indication of commercial origin
  • the registered sign SIMPLY was therefore not inherently distinctive.

The same applied to the sign SIMPLY MARKET. The public would understand this as meaning a supermarket organised simply or whose products had a price or quality that was strictly that of a market in the traditional sense. The sign was not capable of indicating the origin of the products for which it was registered.

The reasoning of the Court is hard to argue with but nonetheless the decision is something of a surprise given the extent of the claimant’s operations in France and Europe. Reportedly, the claimant is appealing this decision.

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