Vente-privee.com is a company specialized in private and exclusive sales through its website www.vente-privee.com. This site is one of the leaders of online private sales in France (“vente privée” literally “private sale”). The company owns the eponymous trademark “Vente-privee.com”, which was recently subject to contradictory rulings by the Court of First Instance of Paris (Court of First Instance of Paris, 3rd chamber, 1st section, November 28, 2013 ; Court of First Instance of Paris, 3rd chamber, 3rd section, December, 6, 2013).
The trademark was disputed by Showroomprive.com, another private sales company. They requested the cancellation of the trademark on the grounds of lack of distinctive character. On November 28, 2013, the Court ruled that the terms used were generic as of the trademark registration in 2009, and only descriptive of the activity of private sales. Therefore the Court held that the trademark did not acquire distinctivity through use. The court pronounced the cancellation of the trademark in respect of the services covered in class 35.
Only a week after that ruling, another section of the same chamber of the Court acknowledged the notoriety of the trademark “Vente-Privee.com” in another case. The company had filed an action against the holder of three domain names highly similar to its trademark and pointing to parking pages listing competitors. On December 6 2013, the Court held that the defendant had registered these names with the sole purpose of trading on the goodwill and reputation of the trademark. The Court concluded to trademark infringement and unfair competition, and acknowledged the notoriety of the distinctive sign “Vente-privee.com” as trademark, company name, trade name, trade sign and domain name.
Vente-privee.com appealed the first decision. It can be hoped that a harmonization will be made by the Court of Appeal.
These decisions enlighten the risks and weaknesses of the trademarks composed of generic terms.
It should be noted that French Courts seem to have adopted a restrictive position in respect to this kind of trademarks.
In another recent case, the Paris Court of First Instance (Court of First Instance of Paris, 3rd chamber, 1st section, November, 28, 2013) cancelled the “Argus” trademarks of the claimant for lack of distinctivity. It seems the Court is ruling harshly to remind the applicants to be very careful as to the descriptive character of their trademark. Legal certainty outweighs freedom of enterprise.