The General Court of the European Union (EGC) recently rejected the action brought by Louis Vuitton Malletier against the decision in which the Board of Appeal of OHIM declared the invalidity of its figurative Community trademark (or more specifically, confirmed the previous judgment of the Cancellation Division of OHIM) representing the iconic brown and beige chequerboard pattern used in the nineteenth century as a covering for trunks and today for high quality leather goods. The Louis Vuitton Maison registered this trademark in 1998 regarding the goods in Class 18 of the Nice Agreement (“goods made of leather or imitations of leather not included in other classes”). However, in 2009, the trademark was declared invalid when an application for a declaration of invalidity proposed by a German company was upheld.
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In particular, the invalidity was based on the fact that the contested CTM was descriptive and devoid of any distinctive character (under Article 7(1)(b) of Regulation No. 207/2009), that it had become customary in the practices of the trade (according to Article 7(1)(d)) and, at the same time, that it consisted exclusively of the shape that gives substantial value to the goods it covered (under Article 7(1)(e)(iii)).
In this context, first the Cancellation Division of OHIM and then the Board of Appeal declared the CTM’s invalidity, upholding its lack of distinctiveness, due to the banality and the purely decorative nature of the chequerboard pattern in the leather industry. All this notwithstanding the fact that the trademark holder incidentally also tried to prove – unsuccessfully – a later acquisition of distinctive character of the sign through use made after its registration as a CTM.
Therefore, Louis Vuitton appealed that decision before the EGC. In support of this appeal, it put forward – inter alia – the following grounds:
- the violation of Article 7(1)(b) of Regulation 207/2009, since the OHIM would not confine itself to assessing the presence of a minimum degree of distinctive character (as in the case of any other trademark), but also would improperly assess the presence of further features that could attract the attention of the relevant consumer and, at the same, would consider the trademark as a common chequerboard pattern;
- the violation of Article 7(3) of the same Regulation, mainly because the OHIM would require the applicant to provide evidence of the acquisition of distinctive character of the trademark at issue for each of the Member States and not for a substantial part of the European Union.
However, the Court rejected the appeal and confirmed the contested decision, after having analytically refuted the allegations made by the French fashion house.
First – the ECG states – the OHIM, assessing the distinctive character of the sign, was fully entitled to consider a higher degree of distinctive character than that used for assessing the distinctiveness of a simple figurative trademark. In fact, in the case at issue, it must apply the principles applicable to the distinctive character of three-dimensional trademarks, since the CTM at issue is a figurative trademark, and also consists of the two-dimensional representation of the product it covers. Thus “the relevant public will immediately and without further thought perceive it as a representation of a particularly interesting or attractive detail of the product in question, rather than as an indication of its commercial origin”.
Consequently, due to the peculiar nature of the sign, certain criteria must be applied during assessment according to which: “the more closely the shape in respect of which registration as a trademark is applied for resembles the shape most likely to be taken by the product in question, the greater the likelihood of the shape being devoid of any distinctive character”; thus “only a trademark which departs significantly from the norm or customs of the sector (…) is not devoid of any distinctive character”. This certainly cannot be said of the CTM in question, because that sign, far from being independent from the product as well as a “normal” figurative trademark, is itself a part of and coincides with the appearance of the products it designates (as it covers the whole of their surface area), without being able to identify their origin.
Secondly, the ground according to which the OHIM would consider the CTM a banal chequerboard pattern, deeming it not distinctive on that basis alone, is also unfounded. In fact, both the brown-beige colour scheme and the visual effect of the weft and warp structure (individually not considered original for goods in class 18), even if they were evaluated together – as is required in the case of complex trademarks – do not make the sign distinctive anyway, because they do not “give rise to any element that diverges from the norm or customs of the sector concerned”.
Even on the second ground of the appeal, the Court ruled against the applicant. The ECG, in fact, points out that “it follows from the unitary character of the Community trademark that, in order to be accepted for registration, a sign must have distinctive character throughout the European Union”; therefore, in contradiction to what the applicant did, “it is necessary to establish the acquisition of distinctive character through use in all the territory in which the mark did not, ab initio, have such character”.
Last but not least, the Court also added that, even if the documents provided by the applicant had been related to the whole of Europe, they would only show the commercialisation of products covered by the CTM at issue, and they would not prove their recognisability – and the consequent acquisition of distinctive character – to the relevant public. This is because the documents provided do not correspond to those indicated by the Community case law as capable of presumptively establishing the acquisition of distinctive character of a trademark through its use.