TEXTO mark is invalid, says court

The Paris Court of Appeal has held that French mobile phone company SFR's TEXTO mark was an everyday word that could not be registered as a trademark (September 23 2009).
In 1998 SFR registered the trademark TEXTO, DITES LE EN TOUTES LETTRES, DITES LE TEXTO (which may be translated as 'text message, spell it out, say it in a text message') for "written messages services for phones". In addition, SFR registered the trademark TEXTO in 2001.
SFR subsequently discovered that an individual, Mr Makhtabi, had created a company called One Texto and had tried to register the trademark ONE TEXTO PETITES ANNONCES ('one text message advertising'). The mark was not registered for procedural reasons, but Makhtabi continued to use it notwithstanding a cease and desist letter. Makhtabi also registered the domain name 'onetexto.com'.
SFR sued One Texto for trademark infringement and unfair competition. One Texto counterclaimed for cancellation of SFR's TEXTO marks on the grounds that they were invalid. The lower court ruled in favour of One Texto, and SFR appealed.  
The Court of Appeal first examined the mark TEXTO, DITES LE EN TOUTES LETTRES, DITES LE TEXTO. It held that the word 'texto' was an abbreviation of the French word 'textuellement' ('textually'). The court also found that the second part of the mark ('dites le en toutes lettres') was descriptive of the services for which the mark was registered. Without examining the rest of the mark, the court held that the whole mark was devoid of any distinctive character and, therefore, was invalid under Article L711-2(b) of the Intellectual Property Code (which implements Article 3(b) of the EU Trademarks Directive (2008/95/EC)).
Arguably, the court confused descriptiveness and lack of distinctiveness and, more importantly, cancelled a mark without having examined it in its entirety.
Second, the court examined the TEXTO mark. Based on press articles filed as evidence, the court decided that at the time of registration, the word 'texto' designated a text message in everyday language. Therefore, the mark was descriptive of the services at issue and was invalid.
The court also dismissed the unfair competition claim and ordered that SFR pay €16,000 in legal costs to One Texto. 
It remains to be seen whether SFR will appeal to the Supreme Court, as the lower court's decision on the first mark is open to debate. 
Richard Milchior, Granrut Avocats, Paris

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