The General Court has recently issued two decisions invalidating Louis Vuitton Malletier’s (‘LV’) EU trade mark registrations for its chequerboard pattern (below), which had been registered in respect of various class 18 goods (boxes of leather or imitations of leather, trunks and travelling bags and various other leather and bag-related goods).
The invalidation process began in 2009, when Nanu-Nana filed actions against the two LV registrations at OHIM on numerous grounds, including that they lack distinctive character.
The Cancellation Division and the Board of Appeal at OHIM both decided in Nanu-Nana’s favour. LV appealed to the General Court, who confirmed the earlier decisions, dismissed LV’s appeals and also provided some guidance on its reasoning, the more salient points being set out below.
Figurative marks — assessing distinctive character
If a 2D mark consists essentially of the appearance of the goods, then the test for distinctiveness is the same as that adopted for 3D marks. Therefore, in order to be registrable, such a mark must depart significantly from the norms of the sector, and must be able to fulfil its essential function of indicating trade origin. Of course, as consumers are not considered to be in the habit of using patterns or shapes to identify trade source, this can be a difficult hurdle to overcome.
In LV’s case, the chequerboard pattern was considered to be commonplace and ‘every day’, and therefore inherently non-distinctive.
Burden of proof in an invalidity action
Whilst there is a presumption of validity once a trade mark is registered, which does restrict OHIM’s obligation to examine the facts, it does not preclude OHIM or the Board of Appeal from being able to rely on not only the arguments and evidence provided by the parties, but also ‘well-known facts’ of which they are aware.
This meant that there was no need for the invalidation decisions to be based only on the evidence and arguments submitted by Nanu-Nana, and OHIM could also take into account their own knowledge in reaching a decision.
Proving acquired distinctiveness in the EU
It was held that the test for proving acquired distinctiveness is not the same as the test for proving that a mark has acquired a reputation in the EU sufficient to qualify for the broader protection provided under Articles 8(5) and 9(1)(c) of the CTMR. Therefore the question is not whether the mark has acquired a distinctive character in a ‘substantial part’ of the EU, but rather whether the mark has acquired a distinctive character in the parts of the EU where the objection pertains. In this case, as the marks contained no verbal elements, the acquired distinctiveness would have to be proven in all member states of the EU.
The evidence submitted to support a claim of acquired distinctiveness at OHIM must be comprehensive, and every fact must be backed up with evidence in order to be given any weight. Therefore, witness statements relating to sales will be given little to no weight unless corroborated, and particularly so if the statement in question comes from the applicant, or from someone closely linked to the applicant.
In LV’s case, it was not considered to have shown that the marks had acquired distinctiveness throughout the entire EU (where the objections pertained), and therefore the marks were held to be invalid.