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A recent decision of the European General Court has resulted in the invalidation of two of Louis Vuitton’s most iconic and recognisable Community trade marks (CTMs). The CTMs, which both consist of Damier checkerboard patterns characterised by weft and warp structures – one in brown and beige, the other in light and dark grey – were registered in 1996 and 2008 in respect of goods in Class 18, notably bags, wallets and purses.

Background

In late 2008, German retailer Nanu-Nana filed an application for invalidity in respect of both CTMs on the basis, inter alia, that they were descriptive and devoid of distinctive character. The Cancellation Division and the Board of Appeal at the Office for Harmonization in the Internal Market (OHIM) upheld the declaration of invalidity in July 2011 and May 2012, respectively. OHIM was of the opinion that the CTMs were very simple and contained no element capable of individualising them in such a way that they would not appear as a basic and banal checkerboard pattern. The additional weft and warp structure was not regarded as constituting a substantial feature of the CTMs such as to give them a distinctive character. Louis Vuitton argued that this feature was copied by infringers attempting to replicate the luxury brand products thus demonstrating that it indeed acted as an indication of commercial origin. However, this contention was rejected by the Office which held that the CTMs failed to fulfil the essential “identification” function of a trade mark.

Although Louis Vuitton sought to overcome the declaration of invalidity by demonstrating that the CTMs had acquired distinctiveness through use in the relevant EU Member States, the Office concluded that the documents and evidence submitted was insufficient.

The appeal

In March 2013, Louis Vuitton appealed this decision in the General Court were it was argued that the acquired distinctiveness ought to have been assessed from 1996 when the first CTM was registered, as opposed to 2009 when Nanu-Nana filed its opposition. In this regard, Louis Vuitton argued that the Office had erred in its assessment of acquired distinctiveness which ought only to have spanned across the 15 Member States that were, then, part of the EU in 1996. It was further argued that the Board of Appeal incorrectly presented the contested CTMs as if they were broad claims for a checkerboard pattern alone, rather than specifically a checkerboard pattern used on leather products, and therefore the contested CTMs were subjected to a higher threshold of distinction.

On 21 April 2015, the European General Court delivered its ruling on each CTM separately, refusing to overturn the Board of Appeal’s decision, agreeing with all of the findings of the Office.

Significantly, this ruling reflects that even long established CTMs are susceptible to invalidity claims, which can only be overcome by comprehensive evidence demonstrating extensive use of the Mark in all EU Member States.xxx

It is imperative to note that Louis Vuitton has the opportunity to appeal to the Court of Justice for the EU, which is a route the luxury designer brand will likely take to protect the pattern which has become so readily associated with Louis Vuitton’s leather goods and accessories. We will keep a pulse on further developments with regards this story and other CTM related news.