Luxury brand Louis Vuitton (“LV”) has been hit with a double blow after the European General Court (Cases T-359/12 & T-360/12 on 21 April 2015) confirmed that two of its figurative Community trade marks (“CTM”), protecting the brand’s chequerboard patterns, are invalid for lack of distinctiveness.
LV had registered their beige and brown, and light and dark grey, patterns with a weft and warp structure as CTMs for leather or imitation leather goods such as bags, cases and travel sets in 1998 and 2008 respectively. In 2009, a German company Nanu-Nana lodged invalidity claims at OHIM.
In upholding the earlier decisions of OHIM’s Cancellation Division and the Board of Appeal, the European General Court made the following key points:
- Given the unitary character of CTMs, a CTM must have distinctive character, inherent or acquired through use throughout the EU.
- In its view it would be paradoxical for a Member State to refuse to register as a national mark a sign that is devoid of any distinctive character in its territory and, on the other hand, that that same Member State has to respect a CTM relating to that sign for the sole reason that it has acquired distinctive character in the territory of another Member State.
- In applying the criteria for assessing the distinctive character of three-dimensional marks consisting of the appearance of the product itself, it should be borne in mind that average consumers are not in the habit of making assumptions about the origin of products on the basis of their shape in the absence of any graphic or word element. It could therefore prove more difficult to establish distinctiveness in relation to such a three-dimensional mark than in relation to a word or figurative mark.
- The marks as applied to the goods within Class 18 (at issue in the case) lacked inherent distinctiveness, as the presentation of LV’s marks did not, from a graphic point of view, contain any notable variation from the conventional presentation of such goods.
- LV could not prove that its marks had acquired distinctive character through use in all Member States as it had filed insufficient evidence of use in a number of Member States. Therefore the previous decisions holding the marks null and void were correct.