Author: Michael Grech
In an EU decision given on the 19th of October 2022, the European General Court (“General Court”) denied Louis Vuitton’s (“LV”) trademark claim of its white-and-blue Damier Azur pattern, for failing to persuade the court that its chequered pattern had acquired distinctiveness through use across all members of the EU territory.
Back in 2015, two particular decisions dated 21st April 2015 (T359/12 & T-360/12), moved to cancel two of LV’s most notorious trademarks in connection with their brown and beige, and light and dark grey chequerboard pattern marks. The General Court noted that these trademark registrations were “basic and banal” as well as “lacked distinctive character”, which consequently resulted in such cancellation – an indisputable blow for the brand.
Following these decisions, just over two months later on the 25th June 2015, the original cancellation applicant Norbert Wisniewski filed a request for a declaration of invalidity on another one of LV’s distinguished trademarks, this time in pursuit of the brand’s ‘Damier Azur’ chequered pattern. Later in 2016, for reasons similar to the ones afforded to the 2015 decisions, LV’s Damier Azur chequerboard pattern mark was declared invalid.
Legal counsel for LV filed a notice of appeal with the European Union Intellectual Property Office (EUIPO) on 3rd February 2017 against the decision handed over by the Cancellation Division. Subsequently, in 2018, the Second Board of Appeal of the EUIPO dismissed the appeal (Case R-274/2017-2). It based its decision once again on Wisniewski’s claim 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.”
A year later, LV appealed against the decision of the Second Board of Appeal and by virtue of the judgment given of 10th June 2020, Louis Vuitton Matellier v. EUIPO – Wisniewski (Representation of a chequerboard pattern, T‑105/19, not published, EU:T:2020:258), the General Court annulled the decision of the Second Board of Appeal. While the Court noted that the Board was correct in saying that the contested mark fell short in “inherent distinctive character”, the General Court found that the Board had violated Article 59(2) of Regulation 2017/1001 on the European Union trade mark (codification), as it had failed to examine all pertinent evidence submitted by the applicant in order to demonstrate the distinctive character acquired through use of the contested mark and to carry out a comprehensive assessment of such evidence.
Consequently, the case was therefore sent back to the Fifth Board of Appeal, which, after probing into the evidence submitted by the applicant, in 2021 (case R 1307/2020-5) decided that LV had failed to provide sufficient evidence to support its claim of having acquired distinctiveness through use. Most notably, according to the Board, the brand was unable to establish acquired distinctiveness corresponding to 6 EU Member States, namely Bulgaria, Estonia, Lithuania, Latvia, Slovakia and Slovenia, and therefore, proceeded to dismiss the action.
Wary of the impact this decision may have on the company, the luxury brand decided to appeal once more, and, in the judgment handed down on the 19th of October 2022, the General Court upheld the previous EUIPO decisions and rejected LV’s trademark claim of having acquired distinctiveness through extended use of its “Damier Azur” pattern on the mere grounds of unsatisfactory evidence.
Legal Considerations by the Court
The main issue at hand is that the proprietor of the design, in this case LV, had to prove that it had acquired distinctive character following the use that was made of it prior to the filing of the application for registration. Otherwise, the LV would have had to prove that it acquired such distinctiveness between the date of registration and the date of the application for invalidity, as was laid down in Case T-112/12, ‘Mondelez UK Holdings & Services v EUIPO’, on 15th December 2016.
Furthermore, the concept of ‘Acquired Distinctiveness’ calls for a significant portion of individuals who recognize the Damier Azur Pattern as emerging from LV. The following criteria must be applied in order to determine acquired distinctive character of a particular brand:
- Heritage and acquired notoriety of the mark across the world;
- The market-share that same mark is holding;
- The total monetary sum invested in the promotion of the mark;
- Opinion polls; and
- Statements provided from chambers of commerce or other trade and professional associations.
The decision described above serves a very important purpose as it highlights the stringent stance taken by the EU courts when taking into consideration all the evidence at hand, most specifically upon proving distinctive character acquired through use. This approach is also reflected in the importance given to the geographical scope of evidence of distinctive character acquired through use throughout the EU territory. Here, the General Court (together with the two Boards of Appeal) aimed to reach a compromise between protecting a brand’s intangible economic value through the claims of ‘Acquired Distinctiveness’ and attempting to limit brands from amassing a legal monopoly over a particular trademark which may in turn hinder innovation and limit competition.