In an overcrowded web and a very competitive e-commerce retail market, search engines optimization is one of the cornerstones of success. Due to the recent changes to Google’s algorithm, there are fewer incentives to use descriptive names. During several years however, choosing a key-word match domain name was a good way to get found online and have a prominent place in search results.
Since a trademark must be a sign able to guarantee the commercial origin of the product or service and distinguish them from those of competitors, key-word match domain names were hardly able to be registered as trademarks.
If distinctiveness may be acquired by use, and thus enable the identification of the commercial origin of goods or services bearing the trademark, it might seem inconsistent to allow a trademark registration on a sign which might always be used in its ordinary meaning by anyone. It would be rewarded by a very limited monopoly, allowing the trademark owner only to deal with unscrupulous counterfeiters.
Recent case law illustrates this issue. It concerns trademark registration vente-privee.com (which could be translated by private-sales.com), owned by French company Vente-privee.com, one of the leaders of e-commerce in France.
The Court (1), dealing with a cancellation action for lack of distinctiveness of the French word trademark vente-privee.com, designating such services as “sales promotion for others; presentation of goods on communication media, for retail purposes” pronounced a kind of judgment of Solomon to ensure legal security among market actors.
The Court cancelled the word trademark, considering that company Vente-privee.com, owner of several figurative trademarks containing the contested sign and of an identical domain name, had no legitimacy to monopolize the words vente-privee.com as a trademark. To deprive its competitors from using those words would cause an undue distortion on competition likely to generate unnecessary litigation.
The expression “vente privée” (or private sales) is a necessary and an essential well-known term and cannot constitute a trademark to designate the corresponding services.
Besides, the Court declared inadmissible the counterclaim for declaration of invalidity for lack of distinctiveness brought against the trademark Showroomprive.com owned by the plaintiff (2).
Will this judgment be upheld by the Court of Appeals of Paris?
In any event, this cancellation does not prevent French company Vente-privee.com from efficiently defending its rights: in a concomitant judgment (3), the figurative trademarks , the domain name “vente-privee.com” and the eponymous commercial name of the company, were recognized as well-known by the Court and were successfully opposed to the fraudulent reservation of the domain names “venteprivees.com”, “ventprivee.com”, “vente-priveee.com” and “ventprive.com”.
Industrial property rights may create and consolidate monopolies but fair competition always prevails. Fully aware of those issues, it is up to trademark owners to make the most informed and fair decisions.
(1) First instance Court of Paris, 3rd Chamber, 1st section, 28 November 2013, Showroomprive.com v/ Vente-privee.com.
(2) In the meantime, Community trademark application showroomprive.com was rejected for “sales promotion for others; presentation of goods on communication media, for retail purposes; demonstration of goods for advertising purposes” because of its lack of distinctiveness, despite the earlier registration of the Community trademark Showroomprive.com No.5761374 in 2007 in particular for online retail services (OHIM, 2nd Board of Appeal, 8 October 2013).
(3) First instance Court of Paris, 3rd Chamber, 3rd section, 6 December 2013, Vente-Privee.com v/ M. A.