The earlier is the owner of the French and Community semi-figurative trademark “vente-privee.com”, underlined with a pink line drawn in diagonal, enriched by two pink butterflies.

The latter is the owner of the French trademark “showroomprive.com” and expected the registration of a community semi-figurative trademark “showroomprive.com” enhanced with some stylized and coloured elements.

However, on August 1, 2012, the Office for the Harmonisation of the Internal Market (herein, “OHIM“) refused such application for “SHOWROOMPRIVE.COM” on the ground that the trademark was not distinctive enough and, much to the contrary, was descriptive for the targeted goods and services.

At the same time, on September 5, 2012, Showroomprive.com assigned before the Paris first instance Court, its competitor, Vente-privee.com, in order to invalidate the “vente-privee.com” trademark for lack of distinctiveness. This trademark had been registered since October 14, 2004 without any complains from ShowroomPrive.com or any other third party.

The first instance Court welcomed Showroomprive.com’s request and decided that “the terms ‘venteprivee.com’ was, at the time of the application date, descriptive of the company’s business activity for every consumer wishing to buy online discounted products; and thus such use was necessary to designate its private sales activity.” In addition, the Paris Court highlighted that the trademark had not acquired any “distinctiveness through its use, thus enabling the term to take ownership of generic names, when such names must remain available for all the economic actors from a given sector.”

Meanwhile, on December 6t, 2013, in another law suit, Vente-privee.com assigned the owner of similar domain names (namely vente-priveee.com, ventprivee.com, venteprives.com) on the basis of its cybersquatting activities. The French first instance Court highlighted that the semi-figurative “vente-privée.com” trademark had to be considered as a well-known trademark. Indeed, in this case, the Court decided that the “vente-privée.com” trademark had a strong reputation due to the fact that a significant part of the relevant public made a connection between the trademark and its associated goods and services.

In conclusion, the decision concerning the semi-figurative trademark should not affect the word trademark “SHOWROOMPRIVE.COM” registered in 2007 by the OHIM. Nevertheless, we can legally wonder about the consequences in case of further contestation regarding a word mark and a close watch should be kept on any follow up evolution.

First published in K&L Gates Trade marks and unfair competition Bulletin no. 1/2014 (PDF) in collaboration with Alexandra Bernard.