Created by Milton Glaser in 1977 for an advertising campaign launched by the State of New York, the sign can now be found in numerous declensions, especially in the tourism sector.
In France, several trademarks resembling the “I ♥ Paris” sign were applied for by the rights owner, Laurent Zilberberg. The oldest of his applications dates back to 1988.
This enabled Mr. Zilberberg to win a number of oppositions against applications for the registration of semi-figurative trademarks in the form of “I ♥ + CITY“. This was confirmed by several rulings of the Aix-en-Provence Court of Appeal on 16 April 2009 (for example , ,, , , , , ).
He also won cases against applications for the registration of verbal trademarks in the form of “I LOVE + CITY”, as the “I ♥” symbol is considered to be equivalent to the words “I LOVE“.
Last but not least, on 21 June 2011, the Paris Court of Appeal acknowledged that Mr. Zilberberg’s oppositions against applications for the registration of the semi-figurative trademarks in the form of “I ♥ + [place/Parisian monument]” (for example , , , , ) were also justified.
However, it is not impossible to register trademarks containing the “I ♥” symbol, since many French and community trademarks that use it are currently listed on registers and continue to be registered. Nevertheless, the scope of protection conferred by these trademarks has now been narrowed down.
In fact, on 13 December 2011, the Paris Court of First Instance (TGI) cancelled five of Laurent Zilberberg’s “I ♥ Paris” and “J ♥ Paris” trademarks due to a lack of distinctiveness in its class of goods.
According to the TGI, the sign is perceived by the consumer as a decorative sign and not as a trademark. As such, the “I ♥ MY T’s” trademark was also cancelled due to a lack of distinctiveness in the category of clothing, since the consumer considered this sign as a “laudatory slogan for advertising purposes” and not a trademark (Paris Court of Appeal, 30 November 2011). The WIPO seems to be taking a similar approach since it partially cancelled the “I ♥ YOU” community trademark for certain goods due to a lack of distinctiveness because the sign was perceived as an expression of the gift-giver’s affection and not as a trademark. On the other hand, the “I ♥ YOU” sign was considered as distinctive in service categories such as wedding planning (WIPO, Board of Appeal, 16 June 2010).
As a result, the “I ♥“
trademarks are being called into question on the grounds of their conditions of validity.
Furthermore, the Paris TGI rendered the “J ♥ Paris” trademark ineffective for a different reason (see above decision of 13 December 2011). In this case, the TGI decided on a partial cancellation of trademark rights due to a lack of use in the category of clothing. In its examination, the TGI considered that “the use of this indistinct expression as a trademark must be clearly demonstrated”. In this case, its use is considered as purely decorative (Paris TGI, 30 March 2012).
Unfair competition was also dismissed in this instance as the court cited a lack of investment by the owner in his sign, since it was merely an adaptation of the sign.
In the lead up to a cancellation, the Paris TGI’s hesitation illustrates above all the dilution of the “I ♥” sign, which is used urbi et orbi in trade as a decoration. As a result, the ability of the “I ♥” sign to fulfill the essential function of guaranteeing a trademark’s origin is a question that remains to be answered.
Céline Baillet – European Trademark Attorney