By Chris Hoole. First published in the ITMA Review July/August 2015
T-359/12 Louis Vuitton Malletier v OHIM
In a dispute that has danced around the jurisdictional handbags since 2009, the General Court has upheld the Board of Appeal’s decision invalidating Louis Vuitton’s trade mark for a chequered pattern for lack of inherent distinctiveness and failure to acquire distinctiveness through use.
On 26 February 2009 Nanu-Nana Handelsgesellschaft mbH für Geschenkartikel & Co. KG (not to be confused with “Nanu-Nanu” from the hit TV series Mork & Mindy), filed invalidation proceedings against Louis Vuitton Malletier’s (LV) CTM Registration CTM 370445 for a chequered brown and beige pattern (the LV Mark), shown below, registered on 27 August 1998 in class 18 for various goods made of leather, including handbags and wallets.
The Cancellation Division and Board of Appeal had previously held in Nanu-Nana’s favour, finding that the chequered pattern lacked inherent distinctive character and had failed to acquire distinctive character under Articles 7(1)(b) and 7(3) of the Community Trade Mark Regulation 207/2009 respectively. The Board of Appeal took the view that:
(1) the chequered pattern represented a “basic and banal feature composed of very simple elements” which were common in the trade
(2) the weft and warp structure did not give it any additional distinctive character and
(3) the documents filed by LV did not show that the LV Mark had acquired distinctive character throughout the European Union.
LV appealed to the General Court, claiming that:
- The Board of Appeal had breached Article 7(1)(b) by:
- requiring the trade mark to reach a higher threshold of distinctive character
- incorrectly presenting the LV Mark as a chequered pattern alone
- wrongly assessing the LV Mark with regard to the goods in class 18 and the perception of the relevant public
- wrongly assessing the burden of proof by taking into account facts not submitted by Nanu-Nana
- The Board of Appeal had breached Article 7(3) by
- taking into account the wrong date for the purpose of determining whether the LV Mark had acquired distinctive character
- requiring evidence of acquired distinctive character for each of the Member States (15 as at the time of registration) rather than a ‘substantial proportion’
The General Court’s Decision
The General Court did not agree and upheld the Board’s decision on all grounds.
Lack of inherent distinctive character
The General Court found that the Board was right to apply the case law relating to three dimensional marks. Essentially, marks which consist of the appearance or shape of a product without any word elements will not be perceived by the average consumer, without difficulty, as commercial identifiers, unless they depart significantly from the norm. The more a mark resembles the shape or pattern of a product, the more it will be seen as an attractive detail and not as a badge of origin.
The General Court agreed with the Board, finding that a chequered weft and warp pattern, which did not depart from the norm (similar patterns dated back to the Bayeux tapestry), coincided with the appearance of class 18 products, which are generally covered with patterned fabrics. The General Court was also happy that the Board applied well-known facts, like the commonality of chequered patterns, as this type of fact might have been omitted by the Examiner during the registration procedure.
Lack of acquired distinctiveness
LV submitted that it had produced evidence for at least 11 out of the 15 member states, which it considered was a substantial proportion of the European Union and the correct test to be applied. The General Court did not agree. Under Article 1(2) of the Regulation a trade mark must have “unitary character” throughout the European Union. A mark is not to be registered if it lacks distinctive character in “a part” of the Union. According to the General Court, this part could be one member state or all of them. Because the LV Mark lacked distinctive character ab initio, the part of the European Union in question was whole of the European Union, so all 15 member states. On the evidence filed, LV had not shown acquired distinctive character for at least 4 of the 15 member states, being insufficient to prove acquired distinctiveness throughout the European Union.
The GC also upheld the decision of the Board in parallel proceedings for a similar LV trade mark featuring a light and dark grey chequered pattern (Case T-360/12)
The General Court’s decision stitches any holes relating to the assessment of distinctive character for pattern marks. In summary, the test for three-dimensional marks applies equally to patterns and, if a mark lacks distinctive character, ab initio, the trade mark owner, may have to show acquired distinctiveness for the whole of the European Union.