TGI of Nanterre, Civ. 1ère, December 3 2015 – vente-privée.com v. M. J-J N and JKC Finance – CECILE DE ROSTAND and cecilederostand.fr
The company vente-privée.com is specialized in the field of online outlet sales from their website www.vente-privee.com which avatar, Cécile de Rostand, helps customers in their shopping, send them emails and have an information blog.
An indelicate costumer, few weeks after his first purchase on the above mentioned website, filed a French trademark application CECILE DE ROSTAND.
Vente-privée.com notably based their action on the following prior rights: the notorious unregistered trademark Cécile de Rostand, the commercial name Cécile de Rostand and copyrights.
The French tribunal considered that the expression “Cécile de Rostand”:
- Was not a notorious unregistered trademark (as regard to article 6 bis of the Paris Convention), considering the fact that there is no use as a trademark since it is “an use to distinguish a character of the company belong to the marketing department (…) and not as a sign allowing consumer to identify the origin of the products and services offered by the plaintiff”
- Is a commercial name used on the whole French territory (a mandatory element in French law), and the contested trademark impairs it since it reproduce it identically, and the services covered are encompassed in the field of activity of the company Vente-privée.com;
- Is an original creation protected under copyright law insofar as this creation was deliberate and not left to the fortuity and that its appearance, its character and its name is the result of a thoughtful creation.
Moreover, Vente-privée.com demonstrate that the defendant, a member of the website vente-rpivée.com since May 21, 2005, had necessarily received emails sent by Cécile de Rostand so he knew the use of this sign before filing of the contested mark.
The judges pronounced therefore the cancellation of the trademark filed in fraud of Vente-privée.com’s prior rights, according to the maxim "fraus omnia corrumpit”.