Pattern Trade Marks in Fashion. The EU General Court Deny Louis Vuitton’s White-and-Blue Damier Azur Trade Mark Claim of Acquired Distinctiveness

Image Source: Louis Vuitton

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

Fashion's Reverse Take on Counterfeiting!

Our Friends over at Le Monde France have written an in interesting article (originally in French) that discusses fashion's new codes and it's reverse take on counterfeiting.

The article, drawing from an extensive report conducted (by the Center for Economic Research and (CEBR)) on the counterfeit market notes that in France - for French businesses; ready-to-wear and accessories - counterfeiting represents 3.5 billion euros of missed sales per year. Against this background, the article then weighs in on the phenomena of trademark counterfeiting and how various brands are no longer hesitating to cash in on this through the producing of their own creations that parody the counterfeit. Using the brand Vetements and their capsule collection called "Official fake" showcased in Seoul - one of the epicentres of the fake, to highlight this shift.

Commenting on luxury's new found Alliance with "street culture. "  It notes that: "until now, only the young brands sold (internet) parodies of logos, such as Brian Lichtenberg and his T-shirts Homiés and Féline or Conflict Of Interest with Chapel and Niu Niu. Today, it is the luxury brands themselves that hijack their logo and parody counterfeit," explains Emmanuelle Hoffman, a lawyer specialising in fashion law. With the clear objective of attracting the approval of generation Z that luxury tries to seduce at all costs. Highlighting the more sophisticated move of luxury brands toward the use of parody as a strategy. 

On the changing dynamics of the fashion system, (and what designer Raf Simons see as the shift between the Bourgeoisie elite and the street) the article continues that:

"For a long time, luxury brands looked with a certain contempt on street culture, which practiced notably the bootleg [the mixture of the authentic and the fake, and more generally the piracy], but it is today the most consumed culture on social networks. There is significance in brands that hire artistic directors who have grown up with these references [like Central St Martins College of Art graduate and Louis Vuitton Head Artistic Director of Menswear Kim Jones]. Without Jones, Louis Vuitton would never have collaborated with Supreme," says Michael Dupouy, founder of Club 75, brand of streetwear.

The article, discussing fashion's young and connected clientele notes that: by breaking with the classic codes of luxury, fashion wants to show that it is part of reality. "This evolution is linked to the digital world in which there can be no vertical discourse. Therefore,  brands must leave their ivory tower. And those who turn themselves into derision are those that work best today, " illicits Benjamin Simmenauer, professor at the French Fashion Institute. 

The full version of this article, in French can be found here.

The EU General Court Has Extinguished Louis Vuitton Rights To Exclusively Use Its Trademarked Chequerboard Logo.

The European General Court dished out a double blow to LV last week, cancelling two trademarks belonging to the luxury brand that protected its iconic chequerboard print 

The signature print known as the ‘Damier’, was first introduced on its canvas trunks in 1888, and is arguably the brands most celebrated pattern next to the LV monogram. The first trademark registration covered a dark brown and beige pattern and was registered as a trademark in 1998. The second trademark registration covered the same pattern but in black and grey and was registered as a trademark in 2008.

In two decisions dated 21 April 2015, the European General Court held that the trademark registrations were ‘basic and banal,’ and ‘lacked distinctive character.’ The legal battle, however, stretches back much further to 2008 when Louis Vuitton originally registered the trademark, which was then called into question in 2009 by German retailer Nanu-Nana who filed an application to have it repealed. In 2011, the request to invalidate the trademark was granted, and the legal team at Louis Vuitton has been fighting to appeal the decision ever since. 
This past month, the European General Court has chosen to uphold the decision made by the First Board of Appeal in 2011. Both the Cancellation Division and the EU Board of Appeal took the view that "the chequerboard pattern trade mark, was…basic and banal, composed of very simple elements and that it was well-known that the features had been commonly used with a decorative purpose in relation to various goods.” The courts found that the trademarks did not have any “features capable of distinguishing it from other representations of chequerboards," and as such was not capable of fulfilling the essential ‘identification’ or ‘origin’ function of a trade mark, and therefore was 'devoid of any distinctive character.'

Louis Vuitton had argued that the pattern was complex, particular and original and these arguments were dismissed by the Court. Essentially, the court felt that the checkerboard pattern lacked any brand-specific features, (unlike the signature LV monogram), capable of “individualising it in such a way that it would not appear as a common and basic chequerboard pattern," or that would "prevent the public perceiving the pattern as commonplace  and everyday."

The courts also found that LV had failed to “demonstrate that the relevant public would be in the habit of making an assumption on the commercial origin of the goods at hand based on patterns.” As the refusal applied across the entire EU, Louis Vuitton had to prove that consumers in every member state would relate the chequerboard marks back to Louis Vuitton. It was unsuccessful in doing so; the Court 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, and therefore the European General Court held that it was right that the registrations should be cancelled.

Conclusion

Many major brands fight long and expensive legal battles to try to retain the exclusivity of a pattern or colour that they believe represents their brand. British luxury brand Burberry went through a similar struggle in 2013 when it appealed against a decision made by the Chinese Trade Mark Office in relation to the Burberry Check that revoked the luxury brands using the haymarket trademark on leather goods. 

As one of the world’s most valuable luxury brand, it is going to be useful to see what sort of impact the Court’s judgment will have on the Louis Vuitton’s future brand protection strategies. 

Commenting on the EU ruling, Sharon Daboul, a trademark attorney at intellectual property law firm EIP, said: “This trademark loss is a double-blow to Louis Vuitton. It can no longer claim to have a monopoly on the chequerboard pattern as applied to leather goods and bags, even if it was the first to come up with it. This loss might make it harder for the company to protect its bags against competitors or counterfeiters in the EU as it will no longer be able to rely on its trademark registrations. It also serves as a warning to brand owners that trademark registrations are not safe from challenge. An essential function of a trademark is to serve as a badge of trade origin. Trademarks must have distinctive character and a trademark loses its ability to be distinctive if it becomes commonplace in the trade; this can be as a result of the acts, or inactivity of the brand owner. If a trademark is allowed to become commonplace such that it can no longer distinguish a product from competitors, its value is lost and a pro-active third party can apply to cancel it."

Despite this, it seems very possible that Louis Vuitton will try to contest this ruling again, as the brand still has the opportunity to appeal the decision to the EU Court of Justice. Fashion Law & business reached out to Louis Vuitton for comment today, but so far has not received a response.