Two cancellation actions initiated by both Van Cleef & Arpels and Cartier International AG led the French trade marks Office to specifically rule on the laudatory nature of trade marks consisting of a city name, VENDOME in relation to jewelry. The decisions (dated July 1, 2022) address the issue from an original perspective.
Two trade marks VENDOME were filed in 2012 and 2019 by the eponymous French city. In 2021, they were partially assigned to Louis Vuitton Malletier regarding class 14 for inter alia jewelry articles. This assignment to a world leader in the luxury industry caused concerned competitors to react. In what seems to be a dispute challenging the monopoly over such a strategic name in the luxury sphere, Van Cleef & Arpels and Cartier International AG, sought to question the validity of the marks.
Could the appropriation of the name VENDOME be likely to obstruct the relevant market?
The claimants argued that the name VENDOME is perceived by the average consumers as a reference to the Place Vendôme, highly reputed square in Paris for high-end retailers of luxury watches and jewelry. It could not, as such, operate as a trade mark in relation to jewelry products. Supported by polls and press articles showing the direct link between the name and the goods at issue, the Office acknowledged that the mark VENDOME lacked distinctive character. Considering the extraordinary reputation of this Parisian square in the field of luxury, the Office went further in its assessment and declared VENDOME laudatory.
Laudatory signs typically characterize praising common words (“SUPER”, “UNIQUE”, “EXCEPTIONAL”, “EXTRA”) which tend to boast qualities of a good or a service, but do not distinguish the origin of such good or service. Considering the name of a square laudatory may strike as a surprise. Nevertheless, according to the examiners,
Place Vendome conveys an image of prestige in relation to jewelry, so that VENDOME is likely to confer positive features to the relevant goods, and will be perceived by the public as a mere selling argument.
This case is a not-so-classic example of the issue pertaining to marks consisting of geographic names. Generally, such names face questions related to their deceptive nature. Nevertheless, in this case, the Office took into account the significant reputation of the Place Vendôme in relation to luxury to conclude on its laudatory nature.
This decision is specific to the name VENDOME. We may however expect the analysis to be the same with regards to other city names which may also be perceived as a selling point, like any other common praising expressions.
