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The Court of Cassation confirms the cancellation of the trademarks I ♥ and J’♥ PARIS…

Vanessa Bouchara

Updated on March 26, 2021

 Cancellation of the trademarks I ♥ and J’♥ PARIS by a decision of January 6, 2015

Mr. Laurent ZILBERBERG, a specialist in the sale of souvenirs and gifts was the owner of numerous French trademarks such as “J ♥ PARIS” or “I ♥ PARIS” since 1980 in various classes of goods that he exploited in particular in the context of his souvenir sales activity. 

The company Paris Wear Diffusion, following numerous oppositions against its applications for registration of trademarks such as “I ♥ La Tour Eiffel” or “Paris je t♥” filed by Mr. Laurent ZILBERBERG, summoned the latter in nullity of trademarks and for payment of compensation for the loss of the unfair competition. The company Paris Wear Diffusion also summoned the licensee of Mr. Laurent ZILBERBERG in forced intervention.

In the first instance, the trademarks “J ♥ PARIS” or “I ♥ PARIS” were cancelled by the Tribunal de grande instance de Paris (TGI Paris, 3rd ch., December 13, 2011, n°10/05299).

Mr. ZILBERBERG having appealed, the ‘Cour d’appel de Paris’ also ruled on the case, upholding the decision of the Paris TGI.

Indeed, the Court had already noted, in its decision of March 8, 2013 and against which an appeal had been filed, the need for a registered sign to be capable of fulfilling the essential function of the trademark, which is to indicate the origin of a product or service and to distinguish it from other products or services of other origins, and specified that this constitutes the very essence of the trademark.

The ‘Cour d’appel’ had therefore applied the autonomous criterion of distinctiveness to rule on the validity of Mr. ZILBERBERG’s trademarks.

The ‘Cour d’appel’ had concluded that the trademarks “I ♥ PARIS” and “J ♥ PARIS” will be perceived by the moderately attentive and informed consumer, familiar with this type of sign since the appearance of the famous slogan “I ♥ NEW YORK” dating back to 1977, as a sign intended to externalize a person’s enthusiasm for a particular geographical location, and not as a guarantee of the commercial origin of the product, even though this sign would be found on labels, for products intended for tourists.

The Cour de cassation dismissed the appeal filed by the owner of the “I ♥ PARIS” and “J ♥ PARIS” trademarks and its licensee, and upheld the decision of the Paris Court of Appeals insofar as it had declared the nullity of trademarks (Cour de cassation,  Com. January 6, 2015, 13-17.108; CA Paris, Pôle 5, chamber 2 March 8, 2013 n°11/22809).

The ‘Cour de cassation’ has reiterated the principle that the distinctive character of a sign that may constitute a trademark is assessed with respect to the designated goods or services and in relation to the public’s perception of that trademark.

Consequently, the ‘Cour de cassation’ stated that the ‘Cour d’appel’ was right to consider that, in order to be distinctive, a sign, even if it is not necessary, generic, usual or descriptive, must lead the relevant public to believe that the products or services from a specific company.

Thus, for the ‘Cour de cassation’, the ‘Cour d’appel’  rightly considered on the one hand that, applied to products related to the tourist trade, the relevant public is made up of tourists of average attention in search of the purchase of souvenirs in order to keep a trace of their passage in Paris and, on the other hand, that this message of attachment to a particular city will lead the consumer to perceive the trademarks in question as decorative signs of which he or she will understand the meaning and not as trademarks providing a guarantee of origin. The function of identifying the origin of the trademarks was therefore not fulfilled for the goods in question.

Now, after more than 30 years of monopoly, merchants in the Paris tourist souvenir market are finally free to use the slogans “I ♥ Paris” or “J’♥ Paris”, as decorative elements on their merchandise without having any prior rights to these signs enforced against them.

This assessment of the distinctiveness of trademarks is in line with the classical position of trademark law and its main objective: indeed, according to Article L.711-2 of the Intellectual Property Code and Directive (EU) 2015/2436 of December 16, 2015 (formerly Directive 2008/95 of October 22, 2008), the essential function of a trademark is to exercise a function of indicating the commercial origin of the goods or services it designates by enabling the average consumer to identify their source, i.e. the producer or manufacturer.

If the trademark failed to perform this function, it was cancelled for lack of distinctiveness.

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