In a dispute between the French online sales company Vente-privee.com and the owner of the trademark CECILE DE ROSTAND for leather goods, household linen and clothing, differences between trademark and trade name natures and functions have been underlined by the First instance Court of Nanterre (1).
Vente-privee.com, in order to obtain the nullity of the trademark which is the name of the virtual character who personifies his customer relations department and is used to send emails to the network members, has developed every legal arguments: the trademark registration would affect its alleged rights on CECILE DE ROSTAND as unregistered well-known mark, as a trade name, as a domain name, and as copyright; the trademark would also have been applied in fraud of Vente-privee.com rights, of which the applicant was aware for he was a member of Vente-privee.com network.
The court upheld the claims of Vente-privee.com, in particular by recognizing that CECILE DE ROSTAND constitutes one of the Company’s trade names:
“The trade name is the name under which a commercial company operates and is known by its customers. The right to trade name is acquired by the first public use. From that date, this distinctive sign is a prior right to a later trademark, needless to provide evidence of its registration in the trade and companies register or even of its personal knowledge by the applicant.
It is not necessary for the trade name to be known to the public, but it must be established that the owner of the sign operates on the entire national territory.”
E-mails of subscription, orders, sale announcements, responses to website members, all sent massively since 2003 by “Cécile de Rostand” from the address firstname.lastname@example.org to members residing throughout France, as well as the management of the blog and Twitter account of vente-privee.com, are all factors that contribute to demonstrate the use of “Cécile de Rostand” as the name under which the firm Vente-privee.com identifies itself in its customer relationships.
The sign is protected as a trade name for the services of e-commerce of consumer goods and equipment in France and abroad and is a prior right against a trademark designating the same kind of goods as those resold by Vente-privee.com.
However, such a use has not made CECILE DE ROSTAND “a mark enabling the public to identify the origin of products and services offered by the plaintiff”. It cannot be considered as an unregistered well-known trademark.
In other words, CECILE DE ROSTAND identifies the company itself but not its activities, unlike “vente-privee.com”, which is the company name, the trade name and the trademark of the firm.
Another issue of this judgment deals with the claim of copyright on the character that Vente-privee.com created to embody the firm among its customers. Originality would derive from:
- the appearance of the character Cécile de Rostand, represented as a pretty young lady, which illustrated the blog and discussion forum “Cécile de Rostand”,
- the personality of this young woman, which reveals a certain “human depth” particularly with regard to her writing style,
- her name, inspired by surnames of the playwright Edmond Rostand and writer Jean Rostand to which was added the particle “de”, contributing to the name scarcity and creating a gap between an outdated era evoked by the noble particle and the avant-garde character of the company Vente-privee.com which created the services of private online sales and was the first website to use a human figure to personify it,
- the blog and forum names “Le blog Cécile de Rostand” and “Le billet de Cécile”.
According to the court, these elements bear the mark of their author. Besides, in the absence of claim from any natural persons, and since the character was disclosed by the company Vente-privée.com, the firm is presumed to be entitled to copyright over this creation, pursuant a now classic interpretation of Article L.113-1 of the Intellectual Property Code (2).
Thus a corporate body is granted copyright on a virtual figure. The intellectual property law becomes sometimes so abstract that it is difficult to get.
(1) First instance Court of Nanterre, 3 December 2015, Vente-privee.com v. M. J-J. N., JKC Finance.
(2) “The Authorship rights shall belong, unless proved otherwise, to the person or persons under whose name the work is disclosed”.