Protection of Trade Dress and
Packaging in France
German French Polish AIPPI Seminar 2015
Olivia Bernardeau-Paupe
20 March 2015
IPMT/Paris
I. Looking for a definition
"Trade dress refers to the features of the visual
appearance of a product or its packaging."
Trade dress can be divided into different categories of
features of the visual appearance of a product.
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I. Looking for a definition – Categories of
trade dress
•  the shape of a product,
•  the shape of the packaging of a product,
•  the colour of a product,
•  the visual appearance of a shop front or decor
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II. The rationale behind the protection
1- Fight against the increase of copycat and lookalike
products
2- Packaging performs key functions
3- The issues at stake
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III. Mecanims of protection
•  No legal definition of trade dress in the French
Intellectual Property Code (hereafter the "IPC"), nor
the EU Directives
•  No specific protection
Protection is derived from existing laws:
A. Trade mark law
B. Industrial design law
C. Copyright law
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A.  Protection through Trade mark law
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1. Legal requirements to protect a shape
as a trade mark
Legal requirements:
• 
Article L.711-1 of the IPC, in line with Article 2 of the Directive 2008/95/CE, provides that:
“A trade mark or service mark is a sign capable of graphic representation which serves to
distinguish the goods or services of a natural or legal person. The following, in particular, may
constitute such a sign: […]
c) Figurative signs such as: devices, labels, seals, selvedges, reliefs, holograms, logos,
synthesized images; shapes, particularly those of a product or its packaging, or those that identify
a service; arrangements, combinations or shades of color”
• 
However, Article L.711-2 c) of the IPC, in line with Article 3 1. e) of the Directive 2008/95/CE,
provides that:
"The following shall not be of a distinctive nature: […]
• 
• 
c) Signs exclusively constituted by
the shape imposed by the nature or function of the product or
which gives the product its substantial value"
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2. Practical implications: Lack of distinctiveness
Paris Court of First Instance, 9 July 2009, Palladium v. EXHL
"(...)
Is not distinctive, a 3D
trade mark which sign is not
able to identify the origin of
a product and link it to a
specific company (...)"
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3. Practical implications: shape imposed by the nature
or the function of the product (1)
•  Shape
mark
cancelled
(French Supreme Court 30
May 2012)
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•  Shape mark distinctive
(Paris Court of Appeal 14
February 2003)
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3. Practical implications: shape imposed by the nature
or the function of the product (2)
Paris Court of Appeal, 19 December 2012, Sarray Biskuvi Gida Sanayi S.A. v.
Ferrero SpA
1. The spherical shape of Ferrero's chocolates was deemed distinctive and
therefore protectable as a trade mark
The Court stated it was not demonstrated that "the spherical shape was imposed
by its nature"
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3. Practical implications: shape imposed by the nature
or the function of the product (3)
Paris Court of Appeal, 19 December 2012, Sarray Biskuvi Gida Sanayi S.A. v.
Ferrero SpA
2. The court held that "the arbitrary combination of the golden paper and the
brown paper cup was not imposed by the nature or function of the product",
therefore this trade mark is distinctive
Although this packaging allows conservation of the products, its shape is not
imposed by such function
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3. Practical implications: shape imposed by the nature
or the function of the product (4)
Paris Court of Appeal, 19 December 2012, Sarray Biskuvi Gida Sanayi S.A. v.
Ferrero SpA
3. The Court held that the "arbitrary combination of the different elements
(distribution of the chocolates, tags, colours, shape of the boxes) are distinctive"
The Court considered these shapes to be "sufficiently remote from the usual
shapes that are frequently used to pack delicacies"
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4. Practical implications:
shape necessary to obtain a technical result (1)
•  Shape necessary to obtain the
technical result
(French Supreme Court, 30 May 2007;
Versailles Court of Appeal, 12 January 2006)
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•  Shape not to obtain the technical
result
(Versailles Court of Appeal,
September 2005)
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5. Practical implications: shape necessary to
obtain a technical result – The Lego cases (2)
•  Versailles Court of Appeal, 26 September 1996, Kirkbi, Lego v. Ritvik
" (...) the shape filed as a trade mark, in all its aspects, is dictated only by
practical and technical considerations" : trade mark cancelled
•  Paris Court of Appeal, 18 October 2000, Kirkbi , Lego v. Ritvik:
"it has been definitively ruled that Kirkbi (manufacturer and seller of the
Lego brick) could not get protection on the shape of the Lego brick as a
trade mark"
•  CJEU, 14 September 2010, Lego Juris v. OHMI:
The CJEU confirmed the position of the French courts
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6. Practical implications: shape which gives
the product its substantial value
Paris Court of First Instance, 17 March 2010, Salvatore Ferragamo Italia v. Comptoir
Lux
"(...) Where a 3D trade mark
represents a closed omega of a
rod and is in the form of a clasp,
it is not demonstrated that it
would be the substantial value of
the designated goods. It is
therefore distinctive. (...)"
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7. Extension of the protection to the
interior decoration of a shop ? (1)
CJEU, 10 July 2014, Apple Inc v. Deutsches Patent-und Markenamt
"a representation (…) which depicts the layout of a retail store by means of an
integral collection of lines, curves and shapes, may constitute a trade mark
provided that it is capable of distinguishing the products or services of one
undertaking from those of other undertakings"
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7. Extension of the protection to the interior
decoration of a shop ? (2)
French Supreme Court, 11 January 2000, Sephora v. Patchouli Valence
• 
The protection of the inside layout of a store is
legally possible as long as the shape is precise
and arbitrary and thus can distinguish the services
at stake
• 
The Court cancelled the trade mark for lack of
distinctiveness due to the imprecise and
complexe elements of the same:
v  the trade mark represents the inside of a
shop with so many elements that it is
impossible to determine which one of
them could be distinctive to distinguish
the services offered by Sephora,
namely advice to individuals in the field of
perfumes.
v  some of the shapes are purely functional
and imposed by the need to display the
perfumes and others are not identifiable.
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B. Protection through Industrial design law
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1. Protection through Industrial design law
Paris Court of Appeal, 30 January 2015, S.A. Beauté Prestige International v.
S.A.R.L. Attractive Fragrances & Cosmetics
Jean-Paul Gauthier's perfume
bottle "Le Mâle" is protected by
Design Law:
The court considered that the shape
of the bottle was:
•  new
•  with its own specificities
(individual character)
V.
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2. Protection through Industrial design law
Paris Court of Appeal, 14 October 2014, Molinel S.A v. Moulins Soufflet S.A, Cawe
FTB Group S.A.S
The specificities of this design have to be appraised taking
into consideration:
-  the global impression in the eyes of an informed user, and
-  the creator's liberty in creating this design, considering the
restrictions ensued by the function of the product
The design has its own
specificities resulting from the
lines that "distinguish the design
from any other vest that was
already published" in the eyes of
a professional baker
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C. Protection through Copyright law
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Protection through Copyright law
Paris Court of Appeal, 8 April 2005, Parfums Christian Dior v. Technique de la
Source
"The bottle that is used to commercialize the perfume
J'Adore by Christian Dior is characterized by its shape
in a
drop of water over which the cap fits in a very
elongated form, continuing the shape of the bottle.
The cap is made of numerous metallic rings topped by
a transparent glass ball (…) the author, through this
combination
of
specificities
(…)
demonstrated
his
personality, conferring originality to the bottle of
perfume"
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IV. Protection through unfair competition
Main general principle: free trade
Limits: Unfair competition/parasitism
ü Developped by the French Courts based upon the
general principle of civil liability embeded in
Articles 1382– 1384 of the French Civil Code
ü It is a safety net
ü It can be invoked as a main or subsidiary claim
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Categories of acts of
unfair competition/parasitism
•  Main general principle : Free Trade
•  Limits to free trade:
Ø  Acts of imitating a competitor for personal gain by
causing a likelihood of confusion on the market place
Ø  Acts of "parasitism": riding on the cost tail of a
competitor by trading upon its reputation, its
investement and its work without any counterparty
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1. Unfair competition/parasitism to the rescue In the presence of IP rights (1)
Paris Court of First Instance, 6 November 2009, Société Ferrero v. S.A.R.L Candy
Team
Ferrero is the owner of the
following
3D
international
registration under which the
famous "tic tac" candies are sold:
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Candy Team sales in France the
"Pick Up" candies in a form highly
similar to the Ferrero's candies:
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1. Unfair competition/parasitism to the rescue - In the presence
of IP rights – Outcome of the case (2)
•  No likelihood of confusion on the part of the relevant
public à No trade mark infringement
•  However the Court held that there were acts of
parasitism:
Ø  The candies are of the same form, same energetic value, and same
colours
Ø  The candies are sold in plastic boxes of the same weight and in similar
packages, in sets of four boxes
! Willingness of Candy Team to trade upon the reputation
of Ferrero and its "tic tac", which is not compatible with
loyal competition
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2. Unfair competition/parasitism to the rescue In lack of IP rights (1)
French Supreme Court, 4 February 2014, Société Ferragamo Parfums v. Parfums
Christian Dior
Christian Dior has been selling in
France the perfume "Miss Dior" for
many years which targets primarily
young women:
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Ferragamo started to sell on the
French market
its new perfume
called "Signorina" also directed at
young women:
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2. Unfair competition/parasitism to the rescue In lack of IP rights - Outcome of the case (2)
The court held that acts of parasitism is the result of:
1. The overall similarity between the products:
Ø 
Ø 
Ø 
Ø 
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Similar powder pink tone and the bright border
Use of a handwriting font to designate the name of the perfume
Name of the fragrance on the upper part of the packaging
Presence of a stylized knot and rectangular form, which have never
been used by Ferragamo for perfume bottles before
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2. Unfair competition/parasitism to the rescue In lack of IP rights – Outcome of the case (3)
2. The products target the same audience
and
3. The company Christian Dior has aquired a worlwide
reputation in the field of perfumes
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3. Unfair Competition/parasitism to the rescue In lack of IP rights
Paris Court of Appeal, 9 April 2009, Lactalis v. Elvir
The Court held that
constituted parasitism :
Elvir's
packaging
Ø  Lactalis' packaging was not dictated by
technological and regulatory constraints
Ø  Lactalis' packaging was innovative and
original
Ø  Lactalis realised important investments
Ø  No significant contribution from Elvir
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4. Unfair Competition/parasitism to the rescue In lack of IP rights
Paris Court of Appeal, 16 April 2010, S.A.S. ZV France v. S.A.R.L. DAVIMAR, S.A.R.L.
FKF
• 
Imitation of the interior layout of Zadig & Voltaire's shops by Bérénice which also
commercializes clothes:
Use of the same interior layout combining:
–  "a low white lacquered furniture of approximately 50 cm height,
–  without visible handles,
–  running along the wall of the store from the window to the back of the
store,
–  topped with rods of the same height (1,73m),
–  without footing and
–  associated with a slightly raised and rectangular central cabinet, also
painted in white, serving of exhibition furniture"
Likelihood of confusion in the mind of the relevant public: Bérénice's acts of
imitation constitute unfair competition
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Conclusion
•  In France no specific protection for trade dress and
packaging
•  Mechanisms of protection available:
–  Trade mark law,
–  Industrial design law, and
–  Copyright law
•  Unfair competition/parasitism remains a very useful
tool both in the presence or in the absence of IP
rights
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MERCI !
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