Emma Brossard Eric Schahl February 13 2023 Trademark or mere decoration? General Court weighs in on Louis Vuitton's checkerboard pattern MIIP MADE IN IP | Intellectual Property - France Emma Brossard, Eric Schahl Intellectual Property FactsDecisionCommentTo be registered in the European Union, a trademark must be sufficiently distinctive with respect to the goods and services it designates. This distinctiveness may be intrinsic or acquired through use. The latter can be difficult to demonstrate, as illustrated by a judgment issued by the General Court of the European Union on 19 October 2022.FactsIn 2008, the company Louis Vuitton filed its checkerboard trademark (Figure 1) for goods in class 18.Figure 1: Louis Vuitton checkerboard trademarkThe mark was registered by the EU Intellectual Property Office (EUIPO) on 31 December 2009. The EUIPO thus considered it to be intrinsically sufficiently distinctive at this time.On 25 June 2015, a Polish citizen filed an action for a declaration of invalidity before the EUIPO, based on several grounds of absolute invalidity. The EUIPO granted the action, holding that the mark was not intrinsically distinctive and had not been made distinctive through use.The EUIPO considered that the sign would be perceived by consumers as an aesthetic design applied to the goods at issue, and that such consumers would thus be accustomed to seeing it thereon. The evidence that Louis Vuitton had submitted to demonstrate that the mark had acquired distinctiveness, including photographs of bags with checkerboard patterns, paradoxically reinforced the claim of lack of distinctive character.This raises the question of why the EUIPO reversed the position it took in 2008, when it had accepted the mark for registration, considering it sufficiently distinctive.DecisionLouis Vuitton appealed to the Board of Appeals, which confirmed the EUIPO's decision to reject the mark. Louis Vuitton then appealed to the General Court of the European Union.On 10 June 2020, the General Court annulled the EUIPO's decision on the grounds that not all the evidence that Louis Vuitton had submitted had been examined. The case was therefore referred back to the Board of Appeals.After re-examining all the evidence, the Board of Appeals considered that Louis Vuitton had failed to demonstrate that its mark had acquired a distinctive character through use. It thus declared the trademark invalid.Louis Vuitton subsequently brought a new action before the EU Court of First Instance, which dismissed the appeal and confirmed the cancellation of the trademark on 19 October 2022.CommentIt is settled case law that the acquisition of distinctive character of a European trademark must be reported in all EU member states.The EU Court of First Instance initially examined the evidence submitted with regard to the territories in which the owner did not have a store (ie, Bulgaria, Estonia, Latvia, Lithuania, Slovakia, Slovenia). The Court held that, if use was proven in these territories, a second examination would have taken place for the rest of the countries. However, the evidence failed to demonstrate to the judges the acquisition of distinctiveness through use in this first series of territories, except in Estonia.This decision is not surprising and confirms the difficulty of proving the acquisition of distinctiveness through use in the European Union. It also shows the weakness of EU trademarks, even when registered.It seems that the judges in this case considered the evidence of exploitation of the mark not as use of a trademark but rather as ornamental use or aesthetic design. Given that the evidence showed the mark being used as decoration, it could therefore not be used to establish the distinctiveness of the sign as a trademark. Parties must have evidence of use that can be clearly identified as trademark use and refrain from filing evidence with ornamental tendencies, unless they present surveys which show that the public does not see a mark as ornamental but instead as a sign that indicates the origin of the products.It is essential for brand owners to consider the filing and the form a mark should take according to the use they wish to claim. Brand owners can then put together a solid file of carefully chosen proofs of use.For further information on this topic please contact Emma Brossard or Eric Schahl at INLEX IP Expertise by telephone (+33 1 56 59 70 90) or email ([email protected] or [email protected]). The INLEX IP Expertise website can be accessed at inlex.com.