The grounds for invalidity of a trade mark in Monaco

A company established in Singapore had registered the trademark “MACCOFFEE” in the European Union for food and beverages to the European Union Industrial Propriety Office (EUIPO). McDonald’s company applied successfully to have this trade mark declared invalid on the basis of its earlier EU trademark Mc DONALD’s as well as 12 other trademarks containing the verbal elements “Mc or Mac” as prefixes (McFISH, Mc TOAST, McMUFFIN, McRIB, McFLURRY, BIGMAC etc.)

The court has noted that the company McDonald’s was prior on the use of the prefix “Mac” or “Mc”, and that the relevant public can associate that trade mark with the McDonald’s ‘Mc’family of trademarks and mentally establish a link between the trade marks at issue.

Theoretically, as Monaco is not a member of the European Union, the General Court of the European Union’s judgement does not apply legally on the Principality’s territory.

However, Monaco fully benefits from the international harmonization of intellectual property regulations, in particular as a contracting party to several international Conventions such as the Paris Convention on the 20th of March 1883 on industrial property protection and the Madrid Agreement for the international registration of marks on the 14th of April 1891, both enforced in Monaco by the sovereign ordinance n°5685 on the 29th of October 1975.

Consequently, the Monegasque trade mark regulation complies with the international standards.

In Monaco, Act n°1.058 enacted on the 10th of June 1983 offers a legal protection to a trade mark provided that its sign is lawful, capable of being represented graphically, distinctive and available.

The condition of availability is largely invoked as a ground to obtain the nullity of the trade mark. As mentioned in the decision commented above, if a sign has already been appropriated for similar goods or products, its invalidity can be declared.

Nonetheless, the condition of distinctiveness applies rarely as the trade mark registration service may raise this issue when assessing the submission. Being distinctive implies that a generic or purely descriptive sign cannot be registered as a trade mark.

For instance, the terms “book” or “house” cannot be validly registered as trade mark given their generic nature.

As an illustration, a company sought assistance from PCM Avocats in litigation where the opposing party claimed that they had counterfeited a trade mark.

The law firm has successfully established a strategy aiming at obtaining the nullity of the claimant’s trade mark on the basis of lack of distinctiveness. The court followed our position according to which the opposing party trade mark was purely descriptive since it did not individualize the products concerned. In that specific case, the invalid trade mark was named after the category of products that it was identifying.

This is an illustration of PCM Avocats practice area whose assistance is frequently sought in litigations in the field of intellectual property.

By Olivier Marquet and Daniel Goldenbaum

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