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In Case T-275/21, Louis Vuitton Malletier v EUIPO, decided on the 19 October 2022, the European General Court (Tenth Chamber) (the “General Court”) confirmed the European Union Intellectual Property Office’s (“EUIPO”) decision that the Damier Azur pattern had not acquired distinctiveness through use and hence could not be registered as an EU trade mark.

Case Background

Louis Vuitton (the “Applicant”) has lost a 7-year long battle to protect its staple chequerboard Damier Azur pattern. Despite obtaining an international registration from the International Bureau of the World Intellectual Property Organisation (“WIPO”) on the 4 November 2008 for those goods and services falling within Class 18 of the ‘Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks’, on the 25 June 2015, Mr. Norbert Wisniewski filed an application with the EUIPO for a declaration of invalidity.

The grounds relied on, in support of the application for a declaration of invalidity, were mainly made on the basis of Articles 198(2), 59(1)(a) and 7(1)(b), (c) and (e) of the EU Trade Mark Regulation (Regulation 2017/1001) (the “Regulation”). Article 7 lists the absolute grounds of refusal for the registration of trade marks. As Mr. Wisniewski was submitting an application for the invalidation of an international registration, Articles 198(2) and 59(1)(a), which detail the type of application to be submitted in such a case, also had to be relied on. Consequently, on the 14 December 2016, the Cancellation Division of the EUIPO granted the application for a declaration of invalidity on the basis of Article 7(1)(b) of the Regulation, which holds that trade marks which are devoid of any distinctive character cannot be registered.

Although this decision was appealed by the Applicant, the Second Board of Appeal of the EUIPO dismissed the appeal on the basis that the pattern was inherently devoid of distinctive character and that the Applicant had not demonstrated that the pattern had acquired distinctive character through use, by decision of the 22 November 2018. Despite failing in its first attempt to protect the Damier Azur pattern, the Applicant launched an appeal before the General Court against the decision of the Second Board of Appeal on the 20 February 2019.

In a surprising twist of events, in ‘Louis Vuitton Malletier v EUIPO’ (Case T‑105/19), decided on the 10 June 2020, the General Court annulled the Second Board of Appeal’s decision on the basis that such Board had failed to examine all the relevant evidence and to carry out an overall assessment of the evidence submitted by the Applicant in demonstrating the distinctive character acquired through use of the contested mark. Nonetheless, the General Court maintained that the Board of Appeal was correct in finding that the contested mark lacked inherent distinctive character.

The case was then remitted to the EUIPO’s Fifth Board of Appeal, who were tasked with re-examining all the evidence submitted by the Applicant. However, the Applicant was yet again left disappointed, as the Board of Appeal decided once again that the Applicant had not demonstrated distinctive character acquired through the use of the contested mark.

Legal Considerations

In launching another appeal before the General Court, this time against the Fifth Board of Appeal’s decision, the Applicant sought to annul the contested decision by relying on Articles 59(2) and 7(3) of the Regulation on the basis that the Damier Azur pattern had acquired distinctiveness through use, and should hence be registered as an EU trade mark. As the General Court had previously ruled that the Board of Appeal was correct in finding that the contested mark lacked inherent distinctive character, the appeal was solely based on the pattern having acquired a distinctive character through the use which has been made of it. This line of reasoning is commonly adopted in trade marks in the fashion industry as the EUIPO has repeatedly required designers to prove acquired distinctiveness. This is established amongst consumers through use and promotion of the product, rather than inherent distinctiveness, whereby a product has sufficient features to distinguish itself from other products on the market. The main reasoning behind this trend in decision-making adopted by the EUIPO, and supported by the higher courts, is that a designer cannot monopolize a particular design, which can be easily represented in a variety of ways; thus the acquired distinctiveness character criteria aims to counter this potential issue.

As was held in the Case T-112/13, ‘Mondelez UK Holdings & Services v EUIPO’, decided on the 15 December 2016, the proprietor would have to prove that the mark had acquired distinctive character owing to the use that had been made of it prior to the date on which the application for registration was filed, or that the mark had acquired such character owing to the use that had been made of it between the date of its registration and the date of application for a declaration of invalidity. The concept of ‘acquired distinctiveness’ was further delved into in the Case T-101/19, ‘Rezon v EUIPO’, decided on the 20 November 2019, whereby it was decided that acquisition of distinctive character through use of a mark requires that at least a significant proportion of the relevant public identifies the goods or services concerned as originating from a particular undertaking, because of that mark; with the burden of proof falling on the proprietor of that mark.

Therefore, ‘acquired distinctiveness’ requires that a proportion of the relevant persons would identify the Damier Azur Pattern as originating from Louis Vuitton. Moreover, in order to determine whether a mark has acquired distinctive character, account must also be taken of:

• The market-share held by the mark;
• The intensity, geographically widespread and long-standing use of the mark;
• The amount invested by the undertaking in promoting the mark;
• Statements from chambers of commerce and industry or other trade and professional associations; and
• Opinion polls.

Interpretation and Decision of the General Court of the European Union

Although it was imperative for the Applicant to prove that the mark had acquired distinctiveness throughout the EU, the General Court noted that it would be “unreasonable to require proof of such acquisition for each individual Member State… [and] the burden of proof imposed on the proprietor of the contested mark of demonstrating distinctive character acquired through the use of that mark must not be unreasonable.” Therefore, acquired distinctiveness should be proven through use throughout the territory of the EU. However, the Fifth Board of Appeal had also singled out Bulgaria, Estonia, Latvia, Lithuania, Slovakia and Slovenia as the Member States concerned (being the only Member States in which the Applicant did not have any stores, together with Malta) wherein the Applicant had failed to prove that the contested mark had acquired distinctive character through its use.

A common tactic used by fashion brands in attempting to overcome this rigorous onus of proof is that of showing how media coverage of the mark has allowed it to acquire distinctiveness. The brand ‘Manolo Blahnik’ had successfully argued before the EUIPO, that due to the fact that their ‘Hangisi’ shoe (which contained the shoe-buckle that the brand wanted to trade mark) was included as one of the central plots in the ‘Sex and the City’ movie, this had aided the shape mark in acquiring distinctiveness. Although the Applicant attempted to prove that the relevant public was exposed to the contested mark to a high degree through excerpts from catalogues, advertising campaigns and media coverage of the contested mark, the General Court found that the evidence presented was not specific enough to demonstrate that the relevant public in the Member States concerned were exposed to them. Making specific reference to printed media, the General Court also noted that despite magazines such as Marie-Claire, Elle, Glamour, GQ, Vanity Fair and Vogue, all containing advertisements for goods bearing the Damier Azur Pattern, the volume of copies distributed in the Member States concerned was small, suggesting that the advertising campaigns did not reach a significant part of the relevant public in the Member States concerned.

Moreover, the General Court also rejected claims that due to the “geographical and cultural proximity of Latvia and Lithuania to Poland and Sweden, on the one hand, and of Bulgaria, Slovakia and Slovenia to Romania, on the other hand” (Poland, Sweden and Romania being Member States in which acquired distinctiveness was proven), the mark in the Member States concerned had acquired a distinctive character with consumers. Ultimately, it was not successfully proven that due to the geographical and cultural proximity between the Member States, “the relevant Latvian and Lithuanian public had sufficient knowledge of the goods or services on the Polish and Swedish markets, or that the relevant Bulgarian, Slovenian or Slovakian public had such knowledge of the Romanian market.”

The General Court thus ruled that the evidence presented was insufficient, in respect to proving acquired distinctiveness in the Member States concerned. The latest decision in Louis Vuitton’s seemingly never-ending trademark battle for its chequerboard Damier Azur pattern serves to show how difficult it is for a brand to benefit from EU trade mark protection for its unconventional mark.

In conclusion, this judgement highlights the need for a compromise to be reached in protecting a brand’s designs, which form part of its main intangible economic value, whilst also preventing fashion brands from acquiring a legal monopoly over a mark, that would consequently limit competition and stifle creativity.

This article was first published in The Malta Independent (16 November 2022).