LVMH’s “Vendôme” trademark cancelled for lack of inherent distinctiveness.
In 2019, the City of Vendôme filed the “Vendôme” trademark in France for jewellery and watchmaking products.
In May 2021, the City sold its trademark to the Louis Vuitton Moët Hennessy group (LVMH). The transfer caused a stir in the press, both for the amount (€10,000), described as ridiculous, and for the political stakes.
Van Cleef & Arpels and Cartier reacted immediately, demanding the invalidation of the “Vendôme” trademark for lack of distinctive character, an essential quality for the validity of a trademark.
Distinctiveness is the ability of a trademark to enable the consumer to distinguish the goods and services it is intended to protect from those of different commercial origin. Distinctiveness must be assessed in relation to the goods and services protected by the trade mark and in relation to the understanding of the relevant public.
In other words, the monopoly enjoyed by the owner of a trade mark may not cover signs which are descriptive or commonly used in relation to the designated goods, with the dual aim of giving the consumer a tool to distinguish the goods of one company from those of others and ensuring that all market operators are able to use descriptive or commonly used words to designate the goods they market.
Van Cleef & Arpels and Cartier argued that the term “Vendôme”, while designating the commune of Loir-et-Cher which has no reputation for the contested products, refers in its most common sense to the Square Vendôme, which alone has an undeniable reputation that stretches well beyond national borders.
Indeed, the Square Vendôme is synonymous with luxury in the eyes of the consumer and the home of many jewellers and watchmakers: a survey of the public in France showed that two thirds of French people associate this sign with jewellery and watchmaking.
As a result, the term “Vendôme” will immediately be perceived by the public as “a selling point capable of influencing the preferences of consumers likely to attach positive qualities to the products, so that it will not be perceived as a guarantee of the commercial origin of the products […] [allowing] to distinguish them, without any doubt, from those of a different origin”.
On 1 July 2022, the French National Institute of Industrial Property (INPI) thus cancelled the LVMH group’s trademark.
The deadline for appealing this decision has expired but it is currently unknown whether an appeal has been lodged by LVMH.
(Décision INPI n. NL 21-0115 of 01/07/2022)