CABINET CHAILLOT

First / First Lady

The society "Parfums Van Cleef et Arpels" titular of the trademark "First" for class 3 products, sued for infringment the society "Succès de Paris", titular of the trademark "First Lady" for class 3 products.

The Court pronounced the nullity of the trademark "First Lady" : the adjonction of the word "Lady" to the word "First" does not make it loose its individuality and these two words do not form an undivisible whole. Paris Court of Appeal (May 20, 1998) Case for the trademark "First Lady" * "First Lady" has its own signification. For the French public, it immediately evokes the President's wife of the United States. * This expression or its French translation "Première Dame" aims to characterize a feminin personality who plays, in a social or cultural environment, a part equivalent to the politic and social part taken by the President's wife of the United States. * The trademark "First" was filed in a very particular typography ; contrary to "First Lady". Case for the trademark "First" * "First Lady" has a unique signification, that is to say "Première Dame" in French, which is only the addition of the meaning of each word. Thus, each word composing the trademark keeps its own individuality and does not fade into an undivisible whole that has an autonomous meaning. * Both involved trademarks designate feminin perfumes. Thus, the public will understand "First Lady" ("Première Dame" in French) with all connotations induced by this expression, and not "Wife of the President of the United States" which designates a situation. * The term "First" evokes a kind of woman and thus the term "Lady" is its natural complement. * The Appellant chose to reproduce each term of "First Lady" the one below the other one, and to give to the word "First" a more preponderant visual importance. Conclusion * The addition of an element to a trademark that belongs to another one is not an infringement, when in the so formed new whole, the reproduced trademark looses its individuality and its distinctive characteristic. * The trademark in charge is "First Lady" and not its French translation "Première Dame". It has to be searched if the first expression and only it, has its own signification. * According to the very numerous papers put to the trial, the denomination "First Lady" designates for the French public the wife of the President of the United States. In order to identify another first position woman, one adds to this expression the country name or any complement such as "of jazz" or "of British cinema". * As the word "First" is an adjective that evokes a classification, a number, and as this term is filed for perfumes, the Respondant cannot support that its natural complement is "Lady". * The public will more easily associate it to the word Perfume and consider that it is the first of the perfumes (with all the connotations induced by this adjective) ; or the first of the Van Cleef et Arpels perfumes. * "First Lady" forms an undivisible whole, having its own signification, independent of its components. In this expression, the word "First" looses its individuality and its own distinctiveness. * The trademark "First Lady" does not infringe by reproduction the trademark "First", either by imitation (L713-3b) as no risk of confusion could be born in the public spirit between the two trademarks, because of their respective signification and evocation power.

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