In an EU decision given today, the General Court has denied Louis Vuitton’s trade mark claim of its white-and-blue Damier Azur pattern, for failing to persuade the court that its checkered pattern had acquired distinctiveness through use across all member states of the EU territory.

Background

Affectionate readers of FLB may remember back to 2015 when we reported two decisions dated 21 April 2015, where the luxury brand Louis Vuitton were faced with cancellation of two of its well-known trademarks in connection with their brown and beige, and light and dark grey chequerboard pattern marks (T-359/12 and T-360/12), which saw the European General Court dish out a double blow to the brand, cancelling the two iconic trademarks, on the basis that in both cases the trademark registrations were ‘basic and banal,’ and ‘lacked distinctive character,’ see here.

 

It follows that, two months after this judgement, on the 25th June 2015, Norbert Wisniewski the cancellation applicant filed a request for a declaration of invalidity on another of Louis Vuitton’s trademarks this time in pursuit of the brands ‘Damier Azur’ chequerboard pattern. Then, in 2016, for reasons similar to that given in the 2015 case (T-359/12 and T-360/12) concerning the brands brown and beige and light and dark grey chequerboard pattern marks, finding for the cancellation applicant Wisniewski mentioned above, LV’s Damier Azur chequerboard pattern mark was declared invalid.

 

On 3 February 2017, Legal Counsel for Louis Vuitton filed a notice of appeal with EUIPO against the Cancellation Division’s decision and in 2018 (in Case R 274/2017-2), the Second Board of Appeal of EUIPO dismissed the appeal, finding again for the Wisniewski ‘that the contested mark was inherently devoid of distinctive character and that the applicant had not demonstrated that the contested mark had acquired distinctive character through use.’

 

In 2019, Counsel for Louis Vuitton appealed against the decision of the Second Board of Appeal, and by judgment of 10 June 2020, Louis Vuitton Malletier v EUIPO – Wisniewski (Representation of a chequerboard pattern, T‑105/19, not published, EU:T:2020:258), the Court annulled the decision of the Second Board of Appeal. Whereas the Court ruled that the Board of Appeal was correct in finding that the contested mark lacked inherent distinctive character, the Court found that the Board of Appeal had infringed Article 59(2) of Regulation 2017/1001, in that it had failed to examine all the relevant evidence submitted by the applicant in order to demonstrate the distinctive character acquired through use of the contested mark and to carry out an overall assessment of that evidence.

 

As such, following the judgment of 10 June 2020, representation of a chequerboard pattern (T‑105/19, not published, EU:T:2020:258), relates solely to whether the contested mark has acquired a distinctive character in consequence of the use which has been made of it, within the meaning of Article 7(3) and Article 51(2) of Regulation No 40/94.

 

Thus, the case was thereafter sent back to the Fifth Board of Appeal, which, after examining all the evidence submitted by the applicant, in 2021 (case R 1307/2020-5) decided that Louis Vuitton had failed to provide sufficient evidence to support a finding of acquired distinctiveness through use. In particular, the brand was unable to establish acquired distinctiveness corresponding to 6 EU Member States: Bulgaria, Estonia, Lithuania, Latvia, Slovakia, and Slovenia, according to the Board, and dismissed the action.

The luxury label unsurprisingly appealed.

And, in a judgement handed down earlier today, the GC have thus upheld the EUIPO earlier decisions and rejected Louis Vuitton’s trade mark claim of acquired distinctiveness through use of its ‘Damier Azur’ pattern on grounds of unsatisfactory evidence.

The GC’s assessment acquired distinctiveness through use for EU trade marks

As set out in the forging case, in order to determine whether a mark has acquired distinctive character, the GC highlighted that the courts take into account: “the market share held by the mark, how intensive, geographically widespread and long-standing the use of the mark has been, the amount invested by the undertaking in promoting the mark, the proportion of the relevant class of persons who, because of the mark, identify the product as originating from a particular undertaking, statements from chambers of commerce and industry or other trade and professional associations as well as opinion polls.” (see also Louis Vuitton Malletier v OHIM – Nanu-Nana (Representation of a grey chequerboard pattern), T‑360/12, not published, EU:T:2015:214,).

 

The GC reiterated that in cases concerning the acquisition of distinctive character through use by a sign that is ab initio, devoid of inherent distinctive character, and therefore requires proof of such evidence. That while ‘No provision of Regulation No 40/94 requires that the acquisition of distinctive character through use be established by separate evidence in each individual Member State.’ Which would be unreasonable to require. Citing the CJEU decision in Nestlé (C-84/17 P, C-85/17 P, and C-95/17 P paragraphs 75 and 76). It reaffirmed that ‘such a mark can be registered pursuant to that provision of Article 7(1)(b) only if can be proved that it has acquired distinctive character through use throughout the territory of the European Union.’ Proof of which could be generated, either collectively for all the relevant Member States or separately for various Member States or groups of Member States. However, it is essential that the evidence supplied includes all EU member states, and be ‘sufficiently specific, substantiated and credible.’

 

GC rejects LV’s arguments and dismisses brands appeal.

Interestingly, Louis Vuitton argued that ‘the analysis, in the contested decision, of distinctive character acquired through use of the contested mark is detached from reality, since it ignores the fact that, throughout the European Union, consumers engage in homogeneous behaviour as regards luxury brands, particularly because they travel and use the internet regularly.’ The courts however rejected these arguments for being ‘too general’… on the basis that LV failed to present precise and 'substantiated evidence for that purpose.'

 

Furthermore, Louis Vuitton then claimed that the distinctive character acquired through use of the contested mark in question for the 6 Eastern European Member States of concern, was ‘corroborated by the geographical and cultural proximity.’ This argument was also rejected by the courts, on the basis that there was ‘that it had grouped those Member States in the same distribution network or that it had treated them, particularly from the marketing strategy perspective, as if they constituted one and the same market.’

 

Comment

This decision serves as an important validation of the stringent stance taken by EU courts in the assessment of the evidence required to show distinctive character acquired through use. Particularly with regard to the importance of the geographical scope of evidence of distinctive character acquired through use, throughout the European territory. The case helps to provide us with more insight on the landscape of non-conventional trade marks in fashion.

 For a full read of this case can be found here. Thanks also goes to Jerome Tassi for bringing this case to our attention.

 Written by Tania Phipps-Rufus