“Vente-privee.com”: a trademark with a distinctive character acquired by its use after registration

Showroom_priveThe Cour de Cassation upheld the appeal court’s decision (CA Paris, Pole 5, ch. 1, March 31, 2015), thereby confirming that the word mark “vente-privee.com” has acquired a distinctive character through use (Com. Dec. 6, 2016, n°15-19048).

On September 5, 2012, the company “Showroomprive.com” sued “Vente-privee.com” for cancellation of a trademark and fraudulent filing. The Tribunal de Grande Instance of Paris, granted “Showroomprive.com”’s application given that the word mark “vente-privee.com” did not have a distinctive character, and therefore declared the mark invalid (TGI Paris 3rd c. , 1st section, Nov. 28, 2013). However, the defendant company appealed and the Cour d’Appel reversed the judgment of first instance, considering that “vente-privee.com” had acquired a distinctive character through use of the trademark.

Showroomprive.com challenged this decision before the Cour de Cassation on the basis of Article L.711-2 of the French Intellectual Property Code (IPC), which makes it possible to pronounce the invalidity of a trademark if it does not have a distinctive character. The company maintains that, while the Article provides for the possibility to acquire distinctiveness by use of the trademark, this possibility is to be interpreted in the light of Article 3§3 of the EU Directive 2008/95/EC on trademarks and the decision of the European Union Court of Justice (ECJ, June 19, 2014, Oberbank AG, Banco Santander SA, Santander Consumer Bank AG c/ Deutscher Sparkassen-und Giroverband eV, C-217/ 13 and C-218/ 13). Indeed on the one hand, Article 3§3 of the Directive also provides for this possibility, but also allows liberty for Member States to choose the time for assessing the acquisition of the distinctive character through use: that is, before or after registration. On the other hand, the jugdment of the ECJ specifies that, if one does not use the option to assess the acquisition of the distinctive character through use subsequent to the registration, said distinctive character should be assessed if it was acquired before the application date for registration of that trademark. “Showroomprive.com” thus considers that since Article L711-2 of the IPC does not expressly provide for this option , the trademark “vente-privee.com” must be declared invalid since it had acquired a distinctive character by use only after registration.

However, the Court considers that by providing for the possibility of acquiring the distinctive character such as to constitute a trademark through use, Article L.711-2 of the IPC made good use of the option left to the Member States by the Directive. Moreover, the Cour de Cassation emphasizes the identified elements showing the acquisition, before the invalidity claim, of the distinctive character of “venteprivee.com” through its use, in particular of the media publications and a poll listing it as one of the favourite French brands.

Thus the Cour de Cassation dismissed the appeal, thus confirming the possibility of acquiring a distinctive character such as to constitute a trademark through use even after the registration date.