In a ruling of 3 October 2019, the Paris court of first instance revoked the semi-figurative trademark “vente-privée” (which may be translated: private-sale) associated with the drawing of a butterfly, filed by the company Vente-privée.com, on the grounds that the trademark lacked distinctiveness to designate events for clearance sales of branded goods to a target clientele, and that it was moreover fraudulent in nature, as Vente-privée.com could not appropriate the generic term “private sale” to harm competitors.

In ruling thus, the court found in favor of the petitions against that trademark by the company Showroomprive.com, a competitor of Vente-privée.com.

The Paris Court of Appeal has just overturned that judgment in a decision of 17 September 2021 by holding:

• that the association of the expression “vente-privée” and the representation of a pink butterfly has been shown to be inherently distinctive, in that it will be perceived by the public as able to identify the aforementioned services as originating with a specific company;
• and that the trademark filing was not fraudulent, it being noted that the distinctive character of the trademark at issue is conferred by the figurative sign taken as a whole and did not prohibit competitors from using the expression “private sale” in the usual sense. This filing was on the contrary legitimate due to the continuous use made by Vente-privée.com of the expression “vente-privée” associated with a pink butterfly.

The Court thus held that bad faith on the part of Vente-privée.com had not been shown and ordered Showroomprive.com to pay Vente-privee.com the sum of €30,000 under Article 700 of the Code of Civil Procedure.

This decision is consistent with that handed down by the Paris Court of Appeal on 31 March 2015, which found that, although the trademark “vente-privée” lacked distinctive character at the time of its registration, it had acquired such character through use; the appeal judges took into account evidence showing intensive use of the trademark after registration. This ruling was upheld by the Supreme Court on 6 December 2016 on the grounds that the company Vente-privee.com had indeed shown intense and continuous use of the sign “vente-privée”.

The essential interest of this decision of 17 September 2021 is that it refused the revocation of fraudulent use of the trademark of Vente-privée.com on the grounds that the generic expression “private-sale” was accompanied by a figurative element – the drawing of a pink butterfly – and that the complex ensemble thus forming said trademark, in addition to the fact of it not preventing competitors from using the expression private-sale, had itself been the subject of intensive use by Vente-privée.com.

In other words, the Court of Appeal based its argument – once again – on the continuous use of that semi-figurative trademark to “purge” the latter of all fraudulent character.

The Court of Appeal is thus taking the counter-position to that adopted by the Court of First Instance, which held that the figurative element (the pink butterfly) was not per se of such nature as to confer upon the semi-figurative trademark complained of an impression sufficiently remote from the expression “private sale” having its usual meaning.

Some will welcome this decision which removes the accusation of fraud from generic trademarks that have acquired a distinctive character through use, provided they include a figurative element of which continuous use has been explicitly shown.

This of course calls for the recommendation to collect and carefully preserve all evidence capable of attesting to continuous use of trademarks that associate generic terms with a figurative element.

Skeptics will remain dubious as to the impact or weight conferred by the butterfly represented as part of the trademark complained of.

The appeal judges considered here that it was an element capable of conferring its distinctive character upon the trademark together with its own overall physiognomy. Let it be duly noted.

The position of the company Vente-privée.com (which has since become VEEPEE…sic) would however have been improved if it had taken the precaution of filing a description of the lepidopteran representation as part of the application, thereby signaling its intention to stress the identification of its trademark through the figurative element.

In any case this is another recommendation which our Firm would make in similar circumstances and we remain at your disposal to advise and assist you when you choose your trademark.

Richard Combes has been an Intellectual Property attorney for over 30 years in the Firm Santarelli. He assists a very diverse clientele, both in France and abroad, primarily handling trademark, design and copyright matters.