Louis Vuitton loses the last round of the Damier Azur brands battle

A long-standing brand back-and-forth on one of Louis Vuitton’s checkerboard patterns has resulted in a loss for the French luxury titan. In a decision handed down on Wednesday, the General Court of the European Union determined that the Board of Appeal of the European Union Intellectual Property Office (“EUIPO”) was correct in concluding that Louis Vuitton had failed to demonstrate that its white and blue Damier Azur pattern had acquired distinctiveness – for use on leather goods (in class 18) – through its use of the check mark in the 27 Member States of the European Union, and therefore, Louis Vuitton is not entitled to trademark registration for the design to be used on things like handbags, backpacks, purses, and luggage.

Setting the stage in its recently issued decision, which stems from an offer of nullity that was first made with EUIPO’s Cancellation Division in 2015 over Louis Vuitton’s EUIPO-registered Damier Azur trademark , the Court states that “on a preliminary basis”, the same court had previously held in a decision of June 2020 that the Board of Appeal had correctly concluded that the Louis Vuitton Damier Azur mark was devoid of “inherent distinctive character” and that, by therefore, the mark should demonstrate that the mark has acquired distinctiveness in order to benefit from trademark registration. In this spirit, the court affirms here that “the present action concerns only the question of whether the disputed Louis Vuitton mark has acquired a distinctive character” as a result of use by Louis Vuitton.

(Following the General Court’s decision of June 2020, the case was referred to the Fifth Board of Appeal of EUIPO which, after examining the evidence presented by Louis Vuitton, considered that the Paris-based brand n failed to demonstrate that the Damier Azur mark had acquired distinctive character (through use of the mark) and dismissed the case. Louis Vuitton appealed and the case again came before the Tribunal. )

As another first point, the General Court states that, in accordance with Article 7(1)(b) EUTMR, trade marks ‘devoid of any inherent distinctive character’ are not registered. However, it also claims that the registration of such a mark can avoid being declared invalid if, through use of the mark after registration, “it has acquired a distinctive character in relation to the goods or services for which it is registered”.

Acquired distinctiveness – or evidence that consumers directly associate a mark with only one of the goods/services as a result of the owner’s extensive use and promotion of the mark – “requires that at least a significant proportion of the relevant public identifies the relevant goods or services as originating in a particular enterprise, by reason of that mark,” the court argued, noting that a mark owner must demonstrate “either that [the mark] had acquired distinctive character through use … before the date of filing of the application for registration, or that the mark had acquired such character through use which had been made between the date of its registration and the date of request for nullity.”

This requires “an overall assessment” of the evidence provided by the trademark holder (Louis Vuitton here), with the court highlighting a handful of factors as key to making such a decision. These factors, which closely mirror the factors used to assess secondary meaning in the United States, include: (1) market share held by the brand; (2) how extensive, geographically widespread, and long-standing use of the mark has been; (3) the amount invested by the trademark owner in promoting the trademark; (4) the proportion of the relevant public which, because of the mark, identifies the goods as coming from a single source; (5) statements from chambers of commerce and industry or other trade and professional associations; and (6) consumer survey results.

The Court’s decision

In this context, the General Court reconsiders the findings of the Board of Appeal which, according to Louis Vuitton, were based “on a limited number of items of evidence, relating specifically to the Member States concerned” (namely Bulgaria, Estonia , Latvia, Lithuania, Slovakia and Slovenia), and therefore the Commission “did not carry out an overall assessment of all the evidence [it was] presented” by the brand. According to the General Court, the Board of Appeal was not mistaken when it decided “to examine first whether the contested mark had acquired distinctive character through the use which had been made of it in Bulgaria, Estonia, Latvia , Lithuania, Slovakia and Slovenia”, then “carry out such an examination with regard to the other Member States of the EU only if the distinctive character acquired through use has been demonstrated for the Member States concerned”.

The importance of Bulgaria, Estonia, Latvia, Lithuania, Slovakia and Slovenia, in particular, is that they are Member States, together with Malta, where Louis Vuitton n there are no shops. (In order to demonstrate that “the relevant public” in these States was exposed to the Damier Azur mark, Louis Vuitton submitted evidence, including “a selection of invoices corresponding to sales of class 18 products bearing the mark challenged to persons residing in [those States]which the board generally considered insufficient to establish that the relevant public “recognizes the commercial origin of the goods concerned when confronted with this mark”.)

Siding with EUIPO, the Court determined that the chamber had indeed “conducted a comprehensive assessment of all relevant evidence, as required” by law. “Interestingly, the Court also rejected Louis Vuitton’s argument that the analysis carried out by the Council [was] “detached from reality, because it ignores the fact that, across the European Union, consumers adopt homogeneous behaviors vis-à-vis luxury brands, in particular because they regularly travel and use the Internet” , Eleonora Rosati, director of the Institute for Intellectual Property and Market Lab at Stockholm University, wrote here. “This argument is too general in nature”, according to the General Court, which stated that “since the burden of proof of the acquisition of distinctive character through use lies with the proprietor of the mark, it is for the latter to provide details and substantiated evidence to this end.

Ultimately, the General Court found that the Board of Appeal ‘did not err in considering that the applicant had not demonstrated that the contested mark had acquired distinctive character through its use in Lithuania, Latvia, Slovakia, Slovenia or Bulgaria”, and therefore, since Louis Vuitton “did not[…]demonstrated that the contested mark had acquired distinctive character through its use in all the Member States of the European Union, the action must be dismissed in its entirety”.

Reflecting on the Tribunal’s decision, Rosati says that “on an anecdotal level” the result “is quite indicative of the difficulty of registering or, as in this case, maintaining registration of a less conventional mark, or even ‘a company like Louis Vuitton’. – which retains the title of the world’s largest luxury brand by revenue – “failed”. From a global point of view, she says that the decision (and the outcome in the Dior Saddle bag case as well) shows “once again clearly that when it comes to marks of this type, the character distinctiveness – whether inherent or acquired – is a real problem and the path to finding acquired distinctiveness is by no means easy (or even feasible) either.

For certain contexts in the United Statest: Louis Vuitton maintains registrations of its various Damier brands in the United States, such as this one for use on leather goods. By accumulating such records, Louis Vuitton’s attorney overcame non-operating denials, arguing in response on more than one occasion that courts have “specifically found that Damier designs are recognized as trademarks”, which is aided by the fact that the print is not “simply a “repeating checkerboard pattern”, but a unique composition that includes the distinctive “LOUIS VUITTON name above PARIS” printed on one of the squares.

The brand also claims registrations in the United States, like this one, for the Damier pattern without the inclusion of “LOUIS VUITTON PARIS”.

The case is Louis Vuitton Malletier v. European Union Intellectual Property Office (EUIPO), T‑275/21.

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