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Distinctiveness ab initio and distinctiveness by…

Vanessa Bouchara

Updated on January 16, 2022

Distinctiveness ab initio and distinctiveness through use of trademarks – venteprivee.com
(Cass.com December 6, 2016)

Distinctiveness is THE condition for the validity of a trademark. Indeed, according to the article L.711-2 of  Intellectual Property Code: ” Can not be validly registered and, if they are registered, are likely to be declared void (…) 2° A trademark devoid of distinctive character “. This is a fundamental principle in trademark law as affirmed by the “Hag” judgments ECJ 17/10/1990 (ECJ, October 17, 1990, aff. C-10/89, SA CNL-SUCAL NV v/ HAG GF AG) or “Arsenal Football Club” 12/11/2002 (ECJ, November 12, 2002, aff. C-206/01, Arsenal Football Club plc v/ Reed).

A trademark is distinctive when it distinguishes the products and services of a company from those offered by its competitors. This character is assessed according to the goods and services for which the trademark has been registered. The trademark also allows to indicate and guarantee the origin of the products and services offered by the company. It should not choose generic words or use common language that would refer to products and services for which it is registered (Article L711-2 of the Intellectual Property Code): “The following cannot be validly registereds and, if registered, are liable to be declared void: 4°. A mark composed exclusively of elements or indications that have become customary in the current language or in the bona fide and established practices of the trade).

For example, the ORANGE brand for cell phone services is quite distinctive. The trademark VETEMENTS to designate clothing would not be.

For a long time, it was easy to obtain the registration of non-distinctive trademarks before the INPI and it was more difficult before the EUIPO (European Union Trademark Office).

Today, it has become much more complex to obtain registration as a French trademark of a trademark that is not very distinctive, even sometimes with a figurative element. Even if the trademark is registered, if it is not sufficiently distinctive, there is a risk that it will be cancelled by the courts in the context of a nullity action.

As an example, the French Courts have cancelled, for lack of distinctiveness, the trademark “I LOVE PARIS” (Cour de cassation, civ. Com. January 6, 2015, 13-17.108), after thirty years of use, to designate souvenir items, or the trademark “CHOCO COOKIE” (CA, Pôle 05, ch.01, March 29, 2016 n°14/23575) to designate coffee-based drinks.

The question that often arises in jurisprudence is whether a trademark, which is not distinctive at the outset, can acquire distinctiveness through use.

This is especially important for companies that may have decided to identify themselves with a talking brand that they can no longer change.

The issue for these companies is that this brand, if it is not protectable, can then be freely used by all the other players in the market.

Companies must be alerted and made aware by their lawyer in trademark law or their intellectual property lawyer in order to set up actions that could help them obtain recognition of the distinctive character through the use of their trademark in the event of a challenge to the validity of this trademark by a third party.

It is indeed possible for a trademark to acquire the criterion of distinctiveness through use by registering it with the INPI or EUIPO only after the trademark has acquired a distinctive character in the public mind.

Indeed, article L.711-2 of the Intellectual Property Code provides that distinctiveness can be acquired through use. However, the article does not provide any further clarification as to the date at which the distinctiveness of a trademark should be assessed.

The  European Court of Justice Union had already taken a position, in a decision of June 19, 2014 (CJEU June 19, 2014, aff. C-217/13), on the issue by admitting the possibility of taking into account acts of use dating back to the filing in order to determine the distinctiveness of a trademark through use. In this decision, the CJEU specifies that the proof of the acquisition of distinctive character through use depends on a certain number of elements and in particular :

  • The market share held by the brand,
  • The intensity, geographical extent, and duration of the use of the trademark,
  • The importance of the investments made by the company to promote it,
  • Or the proportion of stakeholders who identify the product or service as coming from a particular company because of the brand.

The contribution of the “venteprivee.com” ruling

The company “Vente privée.com” has been the subject of numerous court decisions concerning the validity of the “Vente-privée.com” trademark and more specifically concerning the determination of the acquisition of distinctiveness through the use of a trademark.

The legal saga began on November 28, 2013 (TGI Paris, Nov. 28, 2013, RG No. 12856), in the case of “Venteprivee v. Showroomprive”, the High Court considered that the trademark “Venteprivee.com” was devoid of distinctive character because the trademark only describes the services in class 35 referred to in the filing, and in particular promotional sales services allowing customers to buy third-party products and services online, and therefore cancelled it.

In a second decision of December 6, 2013, which has become final, the Tribunal de Grande Instance, on the other hand, considered that the trademark “Vente.privée.com” was a well-known trademark.

The judgment of November 28, 2013 was appealed and in a judgment of March 31, 2015 (CA Paris, Pôle 5,1st ch. March 31, 2015 No. 13/23127), the ‘Cour d’appel de Paris’ reversed the ‘Tribunal de Grande Instance’ , holding that the “Vente privée.com” trademark had acquired distinctive character through use.

Showroomprivee.com then appealed to the ‘Cour d’appel de Paris’, an appeal that was rejected by the ‘Cour de cassation’ in a decision dated December 14, 2016 (Cour de cassation, December 6, 2016 No. 15-19.048) on the grounds that the ‘Cour d’appel de Paris’ had rightly :

“The Court found that “vente-privee.com” had acquired distinctive character through use with respect to sales promotion services on behalf of third parties and the presentation of goods by any means of communication for retail sale, as well as services of grouping together goods and services on behalf of third parties, in particular on a commercial website, as designated in its registration.

In this last decision, the ‘Cour de cassation’ clarified the acquisition of distinctiveness through the use of a trademark. This decision demonstrates that under certain conditions, a trademark that is not very distinctive at the outset can become protectable.

The “Venteprivée.com” trademark, which was ab initio devoid of distinctive character at the time of its filing, has acquired distinctiveness through its use among consumers.

However, such a trademark will remain weak in that its owner will not be able to oppose the use of the terms “vente privée” by a competitor in a totally descriptive manner.

If this possibility for trademarks to have their distinctive character recognized in a second time is a very good thing, it should not go too far…

For example, the high-end Swiss clothing brand called “VETEMENTS” has apparently not been registered as a trademark. Could the operator of such a trademark, if it became very well known, obtain the registration of the trademark which would have acquired a distinctive character through use? In theory, yes, but in practice it is much more likely that it will be cancelled for lack of distinctiveness long before it acquires any.

In more recent decisions, the ‘Cour d’appel de Paris’ (CA, Paris, Pole 5, Chamber 1, Judgment of January 15, 2019, General Directory No. 17/16677) has clarified that it is also possible to take into account the notoriety and intensive use of the corporate name and the trade name of a brand to assess whether a brand has acquired distinctiveness through use.

In conclusion, a trademark that would be devoid of distinctive character can acquire distinctiveness by taking into account acts of use subsequent to the registration.

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