The Court of Cassation has upheld a decision by the Court of Appeal of Paris regarding the cancellation of the trademarks ‘I ♥ PARIS’ and ‘J'♥ PARIS’ the rights over which have been owned by Laurent Zilberberg since the 1980s.
For the Court of Appeal, against whose decision an appeal had been lodged, it was essential that a trademark was able to fulfil its function, i.e. to indicate the origin of a product or service and be able to distinguish it from other products or services from other origins. In its decision, the Court therefore applied the criterion of distinctiveness in arriving at its decision on the validity of Zilberberg’s registered trademarks. It concluded that the above trademarks would be understood by the ordinary, reasonably observant consumer who is familiar with these sorts of signs which have been about since the inception of the famous ‘I ♥ NY’ slogan in 1977, as indicating a person’s enthusiasm for a certain city or place and not as a means of guaranteeing or indicating the commercial origin of the product. This is the case even when the slogan is displayed on labels or on the back of tourist products.
In this regard, the Court of Cassation rejected the appeal brought by the holder of these trademarks and their licensees. The Court recalled that the principle of trademark distinctiveness must be looked at with regards to the products or services being designated as well as with regards to the public’s perception of the trademark.
As such, the Court held that the Court of Appeal was correct in asserting that in order for a trademark to be distinctiveness – even if it is neither necessary, generic, ordinary nor descriptive – must lead the relevant section of the public being targeted by it – to believe that the products or services in question come from an established and ascertainable company.
The Court of Cassation held that the Court of Appeal was also correct in holding that the public being targeted by these products were average tourists looking to buy souvenirs to remember their trip to Paris. For this particular market, the trademark was merely decorative in the sense that it was to show that they had been to Paris and not to guarantee the origin of the product. For the products and services under the trademark in question in this case, the trademark’s function of origin identification was not fulfilled.
This interpretation of distinctiveness is in line with the purpose of trademark law itself which is to allow a trademark to exercise an origin function and to not allow trademarks or signs which do not fulfil this function for a given market or segment of the population.
A further appeal has been lodged against this decision.