The European General Court dealt a double blow to Louis Vuitton last week, ruling invalid two figurative Community trade marks protecting the luxury brand’s classic chequerboard patterns (T-359/12 and T-360/12). The court found a lack of distinctive character (contrary to Article 7(1)(b) of the CTM Regulation (207/2009/EC)) and failure to acquire distinctive character through use (Article 7(3)).

Known to Fashionistas as the ‘Damier’, LV first introduced the signature print on its canvas trunks in 1888. The brown and beige chequerboard pattern, in a weft and warp structure, was registered as a trade mark in respect of leather goods (Class 18) in 1996, and a light and dark grey version in 2008. These patterns still serve as the foundation for many iconic Louis Vuitton leather goods and accessories (for example, the Speedy and the men’s Keepall).

Beige

As reported in IPKat, German retailer Nanu-Nana opposed both CTMs in 2009, claiming that they had failed to acquire a distinctive character across all EU member states. OHIM’s cancellation division and its Board of Appeal both ruled in favour of the applicant in 2011 and 2012, and their reasoning was upheld by the General Court.

Lack of distinctive character

The parties did not dispute that the goods covered by the contested mark are for everyday use, so that the relevant public would be the average consumer in the EU. The Court affirmed the Board of Appeal’s observation that ‘it is not apparent from the description of the goods in question that they are luxury goods’ or ‘so sophisticated or expensive that the relevant public would be likely to be particularly attentive with regard to them’.

The Court confirmed that a key factor was that the marks coincided with the appearance of the products, as the pattern covered some or all of the product’s surface. It was found that consumers would find it difficult to perceive those signs as identifiers of commercial origin if they do not bear any graphic or word elements, unless they departed significantly from the sector’s norms and customs. The presentation of a chequerboard in alternating colours and the impression of interlacing threads was deemed not to “contain any notable variation in relation to the conventional presentation of such goods” and therefore the public would perceive it as a “commonplace and everyday” pattern.

GraphiteFurther, the Court added, “the juxtaposition of two elements that are not in themselves distinctive cannot alter the perception of the relevant public as to the absence of distinctive character, ab initio, of the contested mark”.

Failure to acquire distinctive character through use

The Court rejected LV’s argument that the Board had wrongly assessed whether the CTMs had acquired distinctive character from the date of registration, rather than the date of opposition.

The Court further found that LV had failed to submit sufficient evidence of use to demonstrate that the marks had acquired distinctiveness in each of the then 15 EU member states from the date of registration (contrary to LV’s argument that evidence need only be produced for a ‘substantial part’ of the EU). It was therefore held that there was an absolute ground for refusal and the marks were declared null and void.

 Next steps for LV?

Like many other high-end fashion houses, LV has increasingly introduced products without the LV logo. This shift coincides with a wider shift in consumer attitudes from prominent logos to more discreet, subtle and less accessible luxury, “a change to ‘in the know’ rather than ‘in the show’”. Fashionista will be interested to see what effect (if any) the General Court’s judgments will have on LV’s future brand protection strategies and position as the world’s most valuable luxury brand, a title it has held for nine years.

By: mang
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