26/10/2022
In a recent decision, the European Union’s General Court (GC) held that the EUIPO’s Board of Appeal (BoA) was correct to find that Louis Vuitton (LV) failed to demonstrate that its Damier Azur pattern had acquired distinctiveness through use in the European Union in relation to a variety of goods in class 18 (handbags, purses, wallets, luggage etc.).
Background
The origins of this case can be traced back to 2015 when Norbert Wisniewski filed a declaration of invalidity relating to LV’s EU trade mark registration for the Damier Azur pattern. The grounds of invalidity were that the mark i) is devoid of any distinctive character, ii) consists exclusively of a sign which may serve in trade to designate a quality or other characteristic of the goods for which the mark is registered and iii) consists exclusively of a shape which gives substantial value to the goods for which it is registered.
The EUIPO’s Cancellation Division granted the application for a declaration of invalidity on the basis that the mark was deemed devoid of any inherent distinctive character. The BoA dismissed an appeal by LV, finding (as the Cancellation Division had done) that the mark lacked inherent distinctive character and LV had failed to demonstrate that the mark had acquired distinctive character through use in the European Union.
LV appealed against the decision to the GC, which concluded that the BoA had correctly found the Damier Azur pattern devoid of inherent distinctive character but it had failed to examine all of the relevant evidence submitted by LV in support of its claim to acquired distinctiveness through use. The GC annulled the decision and the matter was remitted to the BoA for consideration.
In 2021, the BoA examined LV’s evidence and found that it did not demonstrate that the Damier Azur pattern had acquired distinctiveness through use in the European Union.
Unsurprisingly, LV appealed again and the matter was sent back to the GC.
The (Second) General Court decision
At the outset of its latest decision, the GC stressed that this matter was solely concerned with whether LV’s evidence demonstrated that its Damier Azur pattern had acquired distinctiveness through use in the European Union.
The GC reviewed the BoA’s approach to considering the evidence filed by LV and was satisfied that it had not erred by limiting its analysis to the evidence concerning use of the mark in Bulgaria, Estonia, Latvia, Lithuania, Slovakia and Slovenia. The significance of Bulgaria, Estonia, Latvia, Lithuania, Slovakia and Slovenia was that LV did not have any brick and mortar stores in those European Union Member States. The GC’s reasoning on this point is summarised in the following excerpt:
“…the Board of Appeal was able, for reasons of procedural economy, to limit its analysis to the Member States concerned, given that, if it were to find that the evidence submitted by the applicant, considered as a whole, was insufficient to prove that distinctive character had been acquired through use in those Member States, it was entitled to conclude that the mark at issue had not acquired distinctive character through use, without any need to assess whether the mark at issue had acquired such distinctive character in the other EU Member States”.
An interesting aspect of the appeal was LV’s claim that the BoA’s analysis of distinctive character acquired through use was “ detached from reality, since it ignores the fact that, throughout the European Union, consumers engage in homogeneous behaviour as regards luxury brands, particularly because they travel and use the internet regularly.”. The GC gave short shrift to this argument, on that basis that it was too general, and affirmed that it is for the proprietor to adduce specific and substantiated evidence of the relevant mark having gained distinctive character through use.
The GC held that the BoA had not erred in finding LV’s evidence failed to show that the Damier Azur pattern had acquired distinctive character through use in all Member States of the European Union.
Consequently, the GC dismissed LV’s appeal in its entirety.
Comment
The GC’s decision serves as a reminder of the difficulties in providing acceptable evidence that a mark has acquired distinctiveness through use in the European Union. For non-conventional marks such as the Damier Azur pattern, distinctive character must be shown throughout the EU. The fact that one of the world’s most valuable brands was unable to furnish the necessary evidence of acquired distinctiveness highlights the difficulties brands face in meeting this high threshold. The GC’s decision means that LV’s Damier Azur pattern was invalidly registered and is deemed never to have existed. LV has lost trade mark registrations for the Damier Azur, Damier Ebene and Damier Graphite patterns in recent years in the European Union – its third largest market by revenue share.
This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking any action in reliance on it.
