Louis Vuitton loses its EU trademark protection for the chequerboard pattern

The European General Court (EGC) decided that the chequerboard pattern device mark of Louis Vuitton is not distinctibe and therefore has to be declared null and void  (Judgment dated 21 April 2015; Case No.: T‑360/12). Background of the Case and Subject Matter On 4 January 2008, the applicant, Louis Vuitton Malletier, filed a Community Trademark (CTM) application for a “chequerboard pattern”at the Office for Harmonization in the Internal Market (OHIM) for bags and luggage (see below). On 21 November 2008 the applicant was granted registration of the abovementioned device mark under CTM No 6587851. On 28 September 2009, the intervener, Nanu-Nana Handelsgesellschaft mbH für Geschenkartikel & Co. KG, a German company, filed an application for a declaration of invalidity relating to all of the goods protected by the registration of the CTM. That application was based on the fact that the contested trademark is descriptive and devoid of any distinctive character, that it has become customary in the current language or in the bona fide and established practices of the trade, that it consisted exclusively of the shape which gives substantial value to the goods and that it was contrary to public policy or to accepted principles of morality. The intervener also claimed that the applicant had acted in bad faith when filing the application for the trademark. By decision of 11 July 2011 the Cancellation Division confirmed the invalidity. The Cancellation Division held that the CTM consisted of a chequerboard pattern with a weft and warp structure intended to be applied to the surface of the goods in question. It went on to hold that that pattern was one of the most basic patterns used as a decorative element, and as such the relevant public would see it as merely a decorative feature and not as an indication of the origin of the goods in question and that, in any event, the contested trademark did not depart significantly from the norms or customs of the sector. In addition, it considered that the documents submitted by the proprietor of the CTM did not prove that, at the date of filing or after its registration, the CTM had acquired distinctive character through the use which had been made of it in at least 8 of the 27 Member States of the European Union (EU). The Cancellation Division concluded that that lack of evidence as regards those States was sufficient to find that the applicant had not established that distinctive character had been acquired through use. On 9 September 2011 the applicant filed a notice of appeal against the decision of the Cancellation Division. By decision of 16 May 2012, the First Board of Appeal (BoA) of OHIM upheld the decision of the Cancellation Division and thus dismissed the appeal. The BoA ruled, that the chequerboard pattern is a basic and banal feature composed of very simple elements and that it is well-known that that feature had been commonly used with a decorative purpose in relation to various goods. The BoA went on to hold that the trademark, in the absence of features capable of distinguishing it from other representations of chequerboards, is not capable of fulfilling the essential function of a trademark to indicate the origin. Furthermore, the BoA considered that the weft and warp structure of the contested trademark did not constitute a substantial feature of that trademark and did not give it a distinctive character. Furthermore, the fact that the weft and warp structure of that trademark had been copied does not demonstrate that it acted as an indication of commercial origin for the relevant public. The BoA consequently is of the opinion that the trademark is very simple and contains no element capable of individualizing it in such a way that it would not appear as a common and basic chequerboard pattern. Furthermore, the court added that signs such as the contested trademark were typically used as supplementary signs which coexisted beside the manufacturer’s house mark. As a result the BoA decided that the trademark was devoid of any distinctive character. Finally, the BoA come to the conclusion, that the documents produced by the proprietor of the contested trademark did not demonstrate that the relevant public would be in the habit of making an assumption on the commercial origin of the goods at hand based on patterns. The court considered, that on the basis of the evidence provided by the applicant, it had not been established that the contested trademark had acquired distinctive character through the use which had been made of it in a substantial part of the relevant territory. Decision of the Court The EGC confirmed the earlier decisions, and therefore consequently, dismissed the appeals of Louis Vuitton. First of all, the EGC is of the opinion that the trademark lacks distinctive character. The Court applied the case-law on the assessment of inherent distinctiveness of 3D and word/device marks which coincide with the appearance of the products, according to which consumers perceive those signs as commercial origin identifiers with some difficulty if they do not bear any graphic or word elements, unless they depart from the norms and customs of the sector. The chequered board patterns are not fulfilling these conditions because they are too basic, too common and lack any specific character. Moreover, they are used very often for decorative purposes on bags and luggage. Secondly, the court is of the opinion, that a CTM must have distinctiveness throughout the EU given the unitary character of CTMs. It follows that a CTM cannot be registered if it is not distinctive in parts of the EU. Nevertheless, CTMs can acquire distinctive character through use either at the time of filing or after registration in order for them not to be vulnerable to a validity challenge. The EGC held that the BoA correctly made the overall assessment of the evidence provided by Louis Vuitton which, however, could not lead to the conclusion that its marks had acquired distinctive character because of the use made of them in the relevant periods of time and in all the territories in which the marks were not deemed to be inherently distinctive - in these cases the entire EU. Indeed, unless Louis Vuitton could have proved the contrary, the assessment of their distinctiveness was to be the same in the entire EU, and both were deemed to lack distinctive character ab initio in all Member States. As a result of these, the trademark has to be declared null and void.