Two of Louis Vuitton’s most iconic Community Trade Marks (CTMs) for its chequerboard pattern have been invalidated by the EU General Court following a challenge by German retailer Nanu-Nana.
Nanu-Nana had claimed that Louis Vuitton’s marks were “descriptive and devoid of any distinctive character.” The European trade mark registry (OHIM) agreed at both the examination and registry appeal stage.
In two separate (but very similar) judgments, the General Court refused to overturn OHIM’s decision.
The Court maintained that the pattern was “a basic and banal feature composed of very simple elements.” The “weft and warp” structure which creates a textured “impression of interlacing threads” did not given the pattern distinctive character.
In order to be registrable as a CTM a mark must be inherently distinctive or have acquired distinctiveness through its use. Somewhat surprisingly given how synonymous the pattern is with Louis Vuitton leather goods, Louis Vuitton was unable to prove that both their beige and brown mark and grey marks had acquired distinctiveness across the EU. The evidence Louis Vuitton submitted, primarily from smaller European markets such as Slovenia, Malta and Portugal was not sufficient to establish acquired distinctiveness.
All is not lost
Louis Vuitton still has one further bite at the cherry in the form of an appeal to the Court of Justice for the EU. In addition, Louis Vuitton could convert the cancelled marks into national marks in those territories where it is able to prove acquired distinctiveness.
Whilst counterfeiters may seek to take advantage of the Court’s decision, Louis Vuitton can pursue producers and distributors of counterfeit goods if it can show passing off or unfair competition (dependent on the EU territory).
Take home points
Even long established marks can be vulnerable to invalidity claims – the beige and brown check trade mark had been registered since 1998. The key, as always, is evidence. If sales, PR and marketing data is maintained for all EU territories it makes establishing both distinctiveness and use significantly easier and reduces the risk of invalidation.
Working with Distributors and Agents: the law and other challenges
On 12 May members of the Fashion Law Group will be giving a seminar at the UK Fashion & Textile Association on the critical legal information that you need to work with distributors and agents both in the UK and overseas. For more information and to book, please click here.