“Checkmate” for Louis Vuitton – Lexology

Last week, the European Court handed down a decision that Louis Vuitton had fought to avoid since 2015.

The Court ruled that Louis Vuitton’s ‘Damier Azur’ chessboard design did not have the distinctive character required to be a registered trademark in the EU.

Unless Louis Vuitton appeals, it will no longer enjoy trademark protection for the design used on accessories such as handbags and purses as well as other products.

The ground not having the required distinctive character

Acquired distinctive character requires that a significant part of the relevant public seeing the mark identify the accessories as coming from Louis Vuitton.

To this end, a series of factors are taken into account, including market share, the amount invested in promoting the brand and “how intense, geographically widespread and longstanding” use has been.

An important factor for Louis Vuitton was to prove acquired distinctiveness through the EU.

It was recognized that it would be “unreasonable” provide evidence for each EU Member State and this evidence could apply to multiple EU Member States. For example, Louis Vuitton could have grouped together some EU member states and acted as if it were a single distribution network.

Alternatively a “geographical, cultural or linguistic proximity” could mean that the public in one EU Member State is sufficiently informed about the goods in another EU Member State. In contrast, presenting evidence for a substantial part or majority of the EU or covering all but one EU Member State would be not be sufficient.

The General Court considered that the evidence provided was insufficient, in particular as regards Lithuania, Latvia, Slovakia, Slovenia and Bulgaria.

Louis Vuitton argued that “Consumers adopt consistent behavior towards luxury brands” throughout the EU due to travel and the internet. However, this was rejected as “too general”.

The Court also decided that Louis Vuitton had not sufficiently substantiated its argument that geographical and cultural proximity meant that the evidence for Poland and Sweden could apply to Lithuania and Latvia and the evidence for Romania could apply to Slovakia, Slovenia and Bulgaria. Accordingly, the acquired distinctiveness had not shown throughout the EU.

Distinction gained in the United Kingdom

The EU covers 27 Member States and it seems difficult to sufficiently show acquired distinctiveness across the EU (for example, as shown by Nestlé in relation to a four-finger Kit Kat chocolate bar without Mark).

On the other hand, for the United Kingdom (which has the same legal requirement as a mark which is “devoid of distinctive character” cannot be registered unless it has acquired distinctiveness through use), it may be slightly easier to register marks as evidence of acquired distinctiveness must be shown throughout the UK United only.

Evidence for a certain region only (like Scotland) would usually not suffice. But that doesn’t mean evidence is needed for every UK city.

Additionally, the guide published by the UK Intellectual Property Office provides an example of a trademark for a Welsh word. This may only require evidence of acquired distinctiveness for a substantial proportion of those who speak Welsh in Wales. Therefore, in theory, it may be easier to reach the territorial threshold of acquired distinctiveness in the UK.

Why file a trademark application?

More and more companies are applying for the registration of non-traditional marks such as shape, color or sound marks. Since October 2017 (in the EU) and January 2019 (in the UK), there is no longer a requirement that marks can be represented graphically (eg as a word or logo).

By way of example, relevant UK and EU laws state that a mark may include designs, colors, sounds, etc. As a result, the requirement now is that the brand be able to:

  • distinguish the goods/services of one company from another; and
  • be represented in a way which means that the object of protection is clear and precise.

As a result, companies apply to register designs as trademarks. Indeed, a model record:

  • lasts a maximum of 25 years (if renewed every five years); a trademark can be renewed indefinitely every 10 years;
  • must be new and produce a different overall impression from any prior designs available to the public; and
  • must be made within one year of the entry of the design or model into the public domain, which is not the case for a trademark.

Starting point

Businesses holding non-traditional marks (which can be presented in a clear and precise manner and are able to sufficiently distinguish the goods/services of the business as originating from its activity) should consider applying for registration while remembering that the Design registration (if relevant) may provide an easier way to obtain IP registration.

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