Vente-privé, comment gérer la notoriété d’un nom générique ?

The trademark has been canceled! The decision caused quite a stir, because – whatever people may say – it is indeed shocking! The average consumer, who for 10 years has been eagerly logging onto the website every morning at 7 a.m. to grab some good bargains, is in fact shocked! This consumer can perfectly make a distinction between and the countless other websites that make generic use of the term vente privée to designate promotional operations.

So in this context, when the same court finally acknowledged the brand recognition of the Vente-privé trademarks, the decision was regarded as more in tune with reality.

But the saga has only just begun…

The situation is made difficult by the generic nature of the name that was chosen originally to create the trademark. The name is first the corporate name of the company that was created in 2001. Then, with the exceptional growth of the eponymous website (500,000 € in 2002, more than 2,500,000 € in 2003, over 17,000,000 € in 2004 and 96,000,000 € in 2005), the corporate name also became the trademark.

But there is a slight problem here. Trademark law provides that names that reflect the usual, generic and necessary designation of an activity cannot be registered as trademarks.

Consequently, from a legal point of view, the choice of the initial name is questionable. However, in practice, this is the best possible choice, as the site is known under this name by consumers, and changing it altogether would imply taking the risk of ruining part of all the efforts already made.

So the issue is: How to choose a generic name as a trademark while such type of name is prohibited by trademark law?
The answer lies in the intellectual property code and arises in particular from practice and experience, as Vente-Privée is not the first case of the sort to have been brought before a court (e.g.: decision of the Supreme court of appeal, Commercial chamber, of 28 April 2004, concerning the LOTO trademark).

Key takeaways:
* The only provision made by trademark law you can rely on concerns the acquisition of distinctiveness through use. This therefore implies using the name concerned as a trademark, i.e.: the trademark should by all means be different from the corporate name of the company that uses it.
* The trademark may advantageously be followed by the ® symbol.
* The trademark should never be preceded by a pronoun (i.e.: LES VENTES PRIVEES)
* An exclusivity territory (even limited) should be determined.
* The trademark should be defended properly, so as to provide evidence in court that such territory does exist and that efforts are effectively being made to preserve it.
* The trademark should be overprotected, so that no third parties will be allowed to choose excessively similar names, particularly on the Internet.
* Any use made by competitors should be managed, especially on the Internet, i.e.: the trademark owner may either opt for positive coexistence (under an agreement), or restrain from taking action, if the territory where exclusivity is claimed is not affected.
In short, it has become more important than ever before that, prior to turning generic names into trademarks, trademark owners first carefully build and detail their trademark policy.

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