In a judgment of 17 September 2021, the Paris Court of Appeal has ruled in favour of the validity of the semi-figurative trademark a descriptive verbal element .  The Judges highlighted in particular that, although the expression “vente privée” is a generic and usual designation of the services provided, the addition of a pink butterfly conferred to the complex sign its distinctive character and enabled the public to identify these services as originating from a specific company. The protection granted did not, however, confer any rights on the non-distinctive verbal element alone.

Background

The registration of a trademark and the resulting protection are only valid if the sign is distinctive. The objective is twofold: the protected sign must not deprive the owner’s competitors of the use of terms that are necessary for their activities, while at the same time allowing for the identification of the origin of the products or services for which the sign is used. In particular, signs that consist exclusively of the description of a characteristic of the product or service, or their usual designation, are not considered to be distinctive.

Descriptive word element and an ornamental figurative element

A recent judgment of the Paris Court of Appeal has clarified the existence and scope of protection of a complex sign composed of a descriptive word element and an ornamental figurative element.

In a first instance ruling of 3 October 2019 (TGI Paris, October 3, 2019, RG No. 16/11737), the lower court initially rejected the distinctiveness of  a semi-figurative mark composed of the verbal element “vente-privee.com” accompanied by a pink butterfly. The judges in the lower court held that the dominant verbal element of the trademark simply described the services offered, while the added figurative element, of a small size, was only decorative and could not as such confer distinctiveness on the sign as a whole. The sign was nevertheless found to be distinctive by usage but the registration was cancelled for fraudulent filing.

Court of Appeal judgment

The lower court’s judgment was reversed on appeal (CA Paris, 17 September 2021, RG No. 19/20427) on both findings:

• With respect to distinctiveness: the Court of Appeal noted that the assessment must be made by taking into account the sign as a whole. Consequently, the figurative element did not have to be excluded from the assessment on the grounds that it was only decorative in relation to a predominant text. The judges acknowledged that the text alone did not go further than a description of the services provided. The figurative element (consisting of a pink butterfly) was, however, “perfectly arbitrary” with regard to the services at issue, and “contribute[d] to the distinctiveness of the sign as a whole”. It was therefore not necessary to show that the distinctive character had been acquired through the use of the mark. The fact that one element of a complex sign has a distinctive character thus conferred valid protection on the sign as a whole – even if the dominant element was only descriptive.
• With respect to the fraudulent nature of the filing: the judgment clarified the scope of the protection granted. Case law and now the Intellectual Property Code provide for the cancellation of a trademark when it is filed in bad faith (i.e. where the filing was made with the intention of depriving others of a sign necessary for their activities). In the first instance decision in the lower court, fraud was deduced from the monopolisation by the applicant company of a common and descriptive term to the detriment of its competitors, combined with the intentions expressed by the applicant company’s owner to appropriate the term itself. The Court of Appeal considered that this reasoning confused the descriptive expression with the protected sign. The Court of Appeal judges clarified that competitors are not deprived of the use of the expression, “vente privée”, since the trademark in question was a complex sign and could not  “confer rights on the expression ‘vente privée’ alone, which cannot be used to distinguish the services in question”. Thus, and logically, the protection of the complex sign did not entail the protection of the usual or descriptive expression, which may be freely used by the applicant company’s competitors.

In practice:

• The Court of Appeal judgment validates a filing strategy consisting of adding an ornamental sign to a descriptive/non-distinctive expression in order to obtain the registration of the whole sign and to ensure the protection of a term or expression that is insufficiently distinctive by itself.

• Although the figurative element may only be ancillary to a descriptive verbal element, one must ensure that it is sufficiently distinctive in itself. An applicant would need to be careful not to attach a logo/decorative element that is itself descriptive of the goods and/or services covered by the application.

The protection obtained will relate to the complex sign as a whole, and such an approach will not enable  an applicant to deprive its competitors of the use of terms of the common language essential to their activities. 

The judgment seems to us to be pragmatic because it protects trademarks that are not necessarily intrinsically distinctive but that have become very “known” and “recognised” by consumers due to their intensive use, often through an original communication.