Lancôme denied registration in ‘harsh’ decision

The Swedish Court of Patent Appeals has rejected Lancôme Parfums et Beauté & Cie's appeal of a refusal to register the trademark MAGNIFIQUE for goods such as perfumes and cosmetics (Case 10-170).
In early 2010 French company Lancôme designated Sweden in its international trademark registration for MAGNIFIQUE. On April 28 2010 the Swedish Patent and Registration Office rejected the designation on the grounds that the mark was descriptive and, therefore, lacked distinctiveness. There is a word in the Swedish language which has the same meaning and pronunciation as the French word 'magnifique', but a different spelling: 'magnifik'.
Lancôme appealed to the Swedish Court of Patent Appeals. The French company was of the opinion that MAGNIFIQUE had a sufficiently distinctive character. It stated that MAGNIFIQUE did not primarily describe the quality of the products at issue, nor was it only an estimation of value. Lancôme considered that the Swedish word 'magnifik' is not commonly used to describe make-up and hygiene products. Instead, the word can be used to describe, for example, individuals, performances and buildings.
Lancôme also claimed that the company had already been granted trademark registrations in 52 other countries and, therefore, it would be remarkable if the Swedish court found that the trademark did not have sufficient distinctive character.
The Court of Patent Appeals held that MAGNIFIQUE could be translated into the Swedish words for 'magnificent', 'brilliant' and 'extraordinary' ('magnifik', 'strålande', 'utomordentlig'); therefore, Swedish consumers were very likely to believe that the trademark MAGNIFIQUE had the same meaning as the Swedish word 'magnifik'. This also meant that Swedish consumers would perceive MAGNIFIQUE as an estimation of value and quality, rather than a trademark. Further, the court noted that it would not be unusual to use MAGNIFIQUE for the marketing of make-up and hygiene products.

The court thus rejected Lancôme’s appeal.
This ruling might seem harsh, since Lancôme’s international registration for MAGNIFIQUE has been accepted in 52 other countries. According to the EU Trademarks Directive (2008/95/EC), a trademark cannot be registered if it is not distinctive. However, this does not mean that it is impossible to obtain a limited scope of protection where the mark has a relatively low degree of distinctiveness. It seems that, in the present case, the court was of the opinion that MAGNIFIQUE was entirely devoid of distinctive character, even though this was not discussed in the decision.
Tom Kronhöffer and Karin Söderström, von lode advokat ab, Stockholm

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