It could be argued that the majority of consumers would recognise the infamous Damier Azur pattern belonging to French luxury fashion house, Louis Vuitton Malletier (Louis Vuitton). Previous iterations of the chequerboard pattern have adorned much coveted luggage for well over 100 years.
However, following an appeal, the EU General Court ruled that Louis Vuitton was unable to provide persuasive evidence of acquired distinctiveness of the Damier Azur pattern, so it was refused registered trade mark protection in the EU. This reaffirms the Board of Appeal’s refusal to register the mark back in 2021, and earlier rulings that the pattern is inherently non-distinctive.
Fashion houses are amongst the most active in trying to secure trade mark protection for more unusual types of trade marks. This is a case of note for others in the field keen to protect iconic designs which have become synonymous with the overall brand, whether it be for a pattern, shape or some other distinctive element. Unusual types of trade mark are difficult to protect and evidence plays a crucial role. This ruling explores what evidence would be considered suitable to prove the “acquired distinctiveness through use”, which is often the key to securing registered trade mark protection.
Louis Vuitton has been in battle with the European Union Intellectual Property Office (EUIPO) for over five years, to prove that its Damier Azur pattern (shown below) is distinctive enough to be a trade mark (please see this article for background: CJEU annuls EUIPO’s trade mark invalidation of Louis Vuitton’s Damier Azur pattern).
After several rulings, in 2021, the EUIPO’s Fifth Board of Appeal (Board of Appeal) concluded in the case of Louis Vuitton Malletier v Norbert Wisniewski that Louis Vuitton’s evidence did not sufficiently prove that the Daimer Azur pattern had acquired distinctiveness and that, therefore, the mark was invalid. The decision focused on the following Member States in the EU: Bulgaria, Estonia, Lithuania, Latvia, Slovakia and Slovenia. These are the EU territories (together with Malta), where Louis Vuitton did not have any physical retail stores.
Louis Vuitton’s Evidence
Louis Vuitton submitted a significant amount of evidence in support of its claim that the Damier Azur pattern had acquired distinctiveness through use. Evidence included magazine clippings, advertising campaigns, sales invoices, and information regarding the history of the Damier Azur pattern. Whilst the Board of Appeal was persuaded that Louis Vuitton’s mark had acquired distinctiveness in a number of EU countries, the evidence was deemed insufficient to show acquired distinctiveness in the Eastern European states mentioned above.
Interestingly, there were some sales in these territories (evidenced by a few invoices), and Louis Vuitton showed that magazines including its adverts had sold in those countries. Louis Vuitton’s website is also accessible from those territories. However, whilst there may have been some degree of use in each of these Eastern European countries, the evidence was held to show that Louis Vuitton’s main commercial and promotional strategy targeted Member States other than the Eastern European countries where it had no stores. There was therefore no acquired distinctiveness in Bulgaria, Estonia, Lithuania, Latvia, Slovakia and Slovenia.
In response to the Board of Appeal’s decision, Louis Vuitton filed a further appeal to the General Court.
Louis Vuitton argued that the Board of Appeal had erred in its decision that the Damier Azur mark had not acquired distinctiveness through use. In considering the appeal, the General Court helpfully clarified what was meant by the ‘acquisition of distinctive character’. It was held that a mark having distinctive character requires that ‘at least a significant portion of the relevant public identifies the goods or services concerned as originating from a particular undertaking, because of that mark’.
The General Court stated that the following factors have to be accounted for when assessing a mark’s distinctive character:
- the market share held by the mark;
- how intensive, geographically widespread, and long-standing the use of the mark has been;
- the amount invested by the undertaking in promoting the mark;
- the proportion of the relevant class of persons who, because of the mark, identify the product as originating from a particular undertaking;
- statements from chambers of commerce and industry or other trade professional associations; and
- opinion polls.
Louis Vuitton advanced several arguments in support of its appeal, but of particular note is the claim that the Board of Appeal made errors in the inpidual and overall assessment it carried out when examining Louis Vuitton’s evidence of use.
The General Court scrutinised the Board of Appeal’s examination of the evidence submitted by Louis Vuitton, by reference to the six factors mentioned above. Louis Vuitton alleged, in particular, that the Board of Appeal was wrong to underplay or disregard evidence such as Louis Vuitton’s brand rankings, invoices showing sales to the relevant Member States, and statements indicating the public in those territories would have been exposed to the mark through significant advertising. Louis Vuitton also claimed that the Board of Appeal should have placed more weight on the value of opinion polls when assessing whether a significant proportion of EU consumers associated the mark with the applicant.
The General Court disagreed with all of the arguments made, stating that the Board of Appeal was entitled to find that Louis Vuitton had not demonstrated the necessary distinctive character through the mark’s use in the Member States concerned. The General Court concluded that the Board of Appeal had not erred in finding that Louis Vuitton had failed to show its chequerboard pattern had acquired distinctiveness in respect of Lithuania, Estonia, Latvia, Slovakia, Slovenia, or Bulgaria. To succeed, Louis Vuitton would need to show acquired distinctiveness across the whole of the EU, so this failure is enough to defeat Louis Vuitton’s trade mark application.
Much like the Dior saddle bag case, this decision is another example which shows that when it comes to evidencing a mark’s inherent or acquired distinctiveness, brand owners face an uphill struggle for non-traditional trade marks.
There is an extremely high evidential burden on a brand owner to prove that a mark has acquired distinctiveness through use. If Louis Vuitton has not been able to prove acquired distinctiveness of its Damier Azur pattern, it is difficult to think of another brand owner that would succeed in showing the requisite level of distinctiveness. It is important to note, however, that acquired distinctiveness for an EU trade mark must be shown throughout the market in the EU, not in just a few EU countries, and the evidence itself is crucial. Louis Vuitton did persuade the EUIPO that its mark had acquired distinctiveness in some countries (e.g., Poland, Sweden, and Romania). Whilst this will not be enough to obtain an EUTM, Louis Vuitton may well find more success at national level, or end up filing more (or different) evidence in a fresh EU trade mark application. We doubt that this decision will mark the end of Louis Vuitton’s attempts to secure broad registered trade mark protection across Europe.
Co-authored by Cherry Beagles, Trainee Solicitor at CMS.
 Case R 1307/2020-5