Distinctiveness of the "vente-privee" brand: end of the legal saga?

 First questioned by Showroomprive.com for its usual character and its lack of distinctiveness, the French semi-figurative mark n ° 4055655 "vente-privee" associated with a butterfly design filed in classes 35, 38 and 41 l t prevails not only on the ground of distinctiveness but also on that of the defect of fraudulent character.

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This legal joust began in 2013. The Paris tribunal de grande instance (TGI Paris, 3e ch., 1re sect., 28 Nov. 2013, n ° 12/12856, D. 2015. 230, obs. J.-P Clavier, N. Martial-Braz and C. Zolynski; Légipresse 2014. 12 et les obs.) Had then canceled the word mark “vente privee.com” n ° 3623085 for lack of distinctive character. In 2015, following the appeal against this judgment, the Paris Court of Appeal (Paris, pole 5 - 1st ch., March 31, 2015, n ° 13/23127, D. 2016. 396, obs. J.-P. Clavier, N. Martial-Braz and C. Zolynski) had finally admitted the distinctive character of the mark acquired through use. The judges had taken into account the evidence demonstrating a continued and particularly intensive use of the mark after its registration. This decision was then reaffirmed by the Cour de cassation in 2016 (Com. 6 Dec. 2016, n ° 15-19.048, D. 2017. 318, obs. J.-P. Clavier, N. Martial-Braz and C. Zolynski; Dalloz IP / IT 2017. 226, obs. C. Le Goffic; Légipresse 2017. 13 and obs.; Ibid. 88, Étude Y. Basire and P. Darnand; RTD com. 2017. 339, obs. J. Azéma; RTD eur. 2017. 336-24, obs. A. Quiquerez).

In 2019, the Paris tribunal de grande instance (TGI Paris, 3rd ch. - 1st sect., 3 Oct. 2019) confirmed the acquisition of distinctive character through the use of the “vente-privee” brand associated this time with the pink butterfly. But it was without counting on the last argument of the company Showroomprive.com: the deposit described as fraudulent. The tribunal de grande instance indeed pronounces the nullity of the trademark filing for fraudulent filing, considering that the Vente-privee.com company was aware of the fact that by proceeding with this filing, it deprived its competitors of the possibility of using the terms "private sale" which are nevertheless necessary for their activity. In this sense, the court underlined that "knowledge of the generic nature of the term and the intentions of appropriation of this term by the company Vente-privee.com are established and even assumed by the manager of this company", who had effectively awkwardly asserted that "if I can get the term 'private sale' to belong to us someday, so much the better." I understand that I can be blamed, but this is the game, everyone defends their territory ".

This solution was open to criticism because if a sign, admittedly useful to all, is recognized as having acquired a distinctive character through use and is then taxed as "filing in bad faith", it may be difficult to benefit from protection, however. offered by the intellectual property code.

The Paris Court of Appeal overturns the judgment of the tribunal de grande instance and considers that the mark is distinctive and that the filing was not fraudulent.

The lack of distinctive character

Article L. 711-2 of the Intellectual Property Code (in the version applicable to this dispute) provides that the signs or names which, in everyday or professional language, are exclusively the necessary, generic designation are devoid of any distinctive character. or usual of the products or services concerned. However, the last paragraph of this article provides that the distinctive character of a mark may be established through use.

On this point, the Court of Appeal first noted that the pink butterfly cannot be reduced, as the tribunal de grande instance had done to an element "purely accessory and decorative", and that it is on the contrary " perfectly arbitrary ”. As it stands, “the association of the expression“ vente-privee ”and the representation of a pink butterfly will be perceived by the public as capable of identifying the aforementioned services as coming from a specific company and therefore to distinguish these services from those of other companies ”.

Since the sign has a distinctive character with regard to the goods and services in Class 35, the Court of Appeal rejected the application for the invalidity of the mark without it being necessary to rule on the acquisition of its distinctive character by the 'use.

On the fraudulent deposit

If fraud is only considered by the intellectual property code in the context of a claim, case law nevertheless uses the adage "fraud corrupts everything" in order to pronounce the cancellation of a trademark. fraudulently filed. The Court of Cassation has also consistently held that "a trademark filing is tainted with fraud when it is carried out with the intention of depriving others of a sign necessary for their activity" (Com. 25 Apr. 2006) , n ° 04-15.641, D. 2006. 1371, obs. J. Daleau; RTD com. 2006. 599, obs. F. Pollaud-Dulian; ibid. 2007. 342, obs. J. Azéma).

The Court of Appeal considers on this point that the company Vente-privee.com had a legitimate interest in registering the mark in order to preserve its rights due to the continued use it made of the sign. It notes that the change of the appellant's name in 2019 to become "Veepee" was no more relevant in demonstrating the fraudulent nature of the trademark filing. Finally, it reviews the evidence provided by Showroomprive.com, namely letters of formal notice from its competitor on the use of the expression "vente-privee.com" but as AdWords. According to the appeals court, these letters were not intended to deprive Showroomprive.com of the use of the colloquial terms "sale" and "private". Indeed, the figurative sign is protected as a whole: the protection of the complex sign does not entail the protection of the usual and descriptive expression which remains usable for the competitors of the ephemeral sales leader.

The Court therefore ruled that the bad faith of the applicant had not been demonstrated and condemns the company Showroomprive.com to pay the company Vente-privee.com € 30,000 under Article 700 of the Code of Civil Procedure.

The essential contribution of this decision is that the court of appeal ignores the argument of the fraudulent nature of the mark in favor of its continued use. The Court of Appeal also insists that it is indeed the figurative mark taken as a whole that is protected. Trademark owners therefore have every interest in associating a figurative element with their marks when they consist of generic terms. However, it is still necessary to ensure that the figurative element is sufficiently distinctive in itself. Finally, this decision encourages trademark owners to collect and safely store all evidence supporting intense and continued use of the trademark.

In any case, Vente-privee.com has probably decided to adopt a new strategy. Also wishing to standardize the name of its brands, known under different names around the world, it now uses its new brand "Veepee" - but always with the pink butterfly - for all the entities of the group.