How can a banal brand become famous or not?

The VENTE PRIVEE.COM trademark was adopted without the owner apparently questioning its distinctive character. Indeed, such a trademark, which uses everyday language, may appear banal in many ways and not susceptible to appropriation by a single market player. The Courts regularly have to assess the validity of registered trademarks and tend to cancel them if they do not fulfill a function of identifying the products and services offered by a company from those of its competitors.

The company SHOWROOMPRIVE.COM has recently experienced this since, by decision of October 8, 2013, the Board of Appeal of the Community Trademark Office (OHIM, named the EUIPO following the 2015 reform) refused the registration of the semi-figurative trademark SHOWROOMPRIVE.COM, thus confirming the position taken by the Office in a first decision of October 15, 2012, notwithstanding the fact that it was a semi-figurative trademark with a particular visual.

For the EUIPO Board of Appeal, the trademark is descriptive in nature because the expression that makes it up immediately informs the consumer, and without further thoughtThe services requested are services for the sale of products on the Internet for which private access is required or a private access showroom on the Internet.

The structure of this expression does not deviate from the grammatical rules of the French language but, on the contrary, conforms to them, which the Office does not fail to note.

The SHOWROOMPRIVE.COM trademark

“A trademark or service trademark is a sign used to distinguish the goods or services of a natural or legal person from those of other natural or legal persons. This sign must be able to be represented in the national register of trademarks in such a way as to enable any person to determine precisely and clearly the subject matter of the protection conferred on its owner.”

The VENTE-PRIVEE.COM trademark

The same fate befell the trademark, before the Parisian Courts, in a dispute opposing it to SHOWROOMPRIVE.COM. By decision of November 28, 2013, the Tribunal de Grande Instance considered that the VENTE-PRIVEE.COM trademark was devoid of distinctive character.

The Court noted that the expression “private sale” is part of everyday language and constitutes the usual and necessary designation of the eponymous service.

Consequently, for the Court, these terms constituted before 2009 (date of the registration invoked in the context of these proceedings) a term necessary to designate a particular sales service consisting in offering, during events limited in time and to a restricted public, branded products in limited numbers resulting from a destocking.

The addition of the .com after these two words without their accentuation only indicates that the private sales service is offered online and not in stores.

However, the Court took care to examine whether the trademark had acquired notoriety through the use that had been made of it.

However, given that VENTE-PRIVEE.COM has not produced any evidence to justify the notoriety of its trademark and has not produced any survey in the debates to verify what the consumer recognizes, the notorious nature of the trademark will not be retained.

VENTE-PRIVEE.COM appealed and won its case before the Paris Court of Appeal in 2015.

Proof of the continuous, intense and multi-year use of the sign vente-privée.com had been provided, in particular by the use of complex trademarks incorporating this verbal element, to establish the distinctiveness of the sign (Paris Court of Appeals, Pole 5, March 31, 2015, No. 13/23127).

The judges specified that the sign having acquired a distinctive character only through use, competitors could not be deprived of the use of the expression “private sale” in its common meaning.

A trademark registration is indeed tainted by fraud when it is made with the intention of depriving others of a sign necessary to their activity (Cass. Com., April 25, 2006, appeal n°04-15.641).

The judges ruled out fraud on the grounds that VENTE-PRIVEE.COM had a legitimate interest in protecting its sign, which it had been using for many years.

The company SHOWROOMPRIVE.COM appealed to the Supreme Court and was dismissed by the Commercial Chamber in 2016.

The Supreme Court recalls that while the distinctive character of a sign is assessed at the time the judge rules, the claim for invalidity for fraud of a trademark must be assessed on the day of its filing (Cass.Com., December 6, 2016, Appeal No. 15-19.048).

It therefore criticized the Court of Appeal for having referred to distinctiveness through use, subsequent to the filing of the trademark, to assess fraud.

A few days after the November 28, 2013 ruling by the Tribunal de Grande Instance, on the basis of other VENTE PRIVEE.COM trademarks filed in 2004 and 2005 in particular, the same Court otherwise composed considered that the trademark was well-known (TGI Paris, 3rd Chamber 3rd Section, December 6, 2013, No. 13/14248).

The Court of First Instance took into account the turnover of direct sales on the Internet made by the owner of the said company trademark. The company’s financial statements include the following information: the number of sales, the number of members, the number of connections per day on the site, press articles describing the site as the number 1 in the Internet stock clearance market.

Was also produced :

• a Médiamétrie.Netratings study that places the venteprivee.com site among the top 10 most visited sites by women;
• a study by the Federation of e-commerce and distance selling conducted in 2010 ranking the site 10 of merchant sites in France;
• as well as a Leo Burnett – BVA survey conducted on the Internet in 2011 for the magazine “Capital”, which ranked vente-privee.com fourth in the list of retail trademarks.

In light of all these elements, the Court considered that the reputation of “vente-privee.com” was justified.

Despite the decisions in favor of VENTE-PRIVEE.COM, SHOWROOMPRIVE.COM again sued for invalidity of its complex trademark (filed in 2013) for lack of distinctiveness and fraud.

The company SHOWROOM.COM had submitted to the debates a press statement from 2007 by the manager of its opponent who indicated “if I manage to make the term private sale belong to us one day, all the better”.

It also argued that the complex trademark was filed solely because of the unfavorable 2013 judgment declaring the word trademark VENTE-PRIVEE.COM invalid.

While the judges of first instance ruled out invalidity for lack of distinctiveness, they retained, by a judgment of June 25, 2019 (TGI Paris, 3rd chamber 1st sec, October 3, 2019), the invalidity of the complex trademark for fraud.

The court found that VENTE-PRIVEE.COM had appropriated the generic expression “vente privée” even though it could not have been unaware of its generic use by professionals in the sector when it registered its trademark.

The Paris Court of Appeal, in a decision dated September 17, 2021, overturned the first instance judgment.

It recalls that since the sign must be taken as a whole, without the presence of the stylized butterfly being discarded, the expression “vente privée” had not been appropriated by VENTE-PRIVEE.COM (Paris Court of Appeals, Pole 5, September 17, 2021, No. 19/20247).

The Court also relied on the sustained use of the complex sign between 2001 and 2013 to establish the legitimate interest of the company VENTEPRIVEE.COM in registering it as a trademark. It also dismisses the 2007 press statement as insufficient to characterize the bad faith of the depositor.