CJEU annuls EUIPO’s trade mark invalidation of Louis Vuitton’s Damier Azur pattern

Europe

On 10 June 2020, the General Court of the CJEU (“GC”) published its decision on the Louise Vuitton Malletier (“Louis Vuitton”) case,[1] which relates to the validity of Louis Vuitton’s figurative ‘Damier Azur’ pattern as a registrable trade mark. The GC annulled the earlier decision of the Second Board of Appeal (“BoA”),[2] which in 2018 had found the mark to be invalid. However, the GC determined that the BoA had not, in coming to its decision, undertaken a proper assessment of the evidence which could potentially have shown distinctiveness that the mark had acquired from its use in the EU.

The decision is a reaffirmation of the EU’s rigorous approach to assessing the unitary character of EU trade marks, with the GC emphasising the need for distinctiveness, inherent or acquired through use, throughout the EU. This is a high and often very challenging requirement for applicants. So, although the GC annulled the BoA’s decision on the basis of improper assessment of the evidence, it remains open whether or not the excluded evidence would be sufficient to prove acquired distinctiveness. The outcome for Louis Vuitton’s Damier Azur pattern is therefore yet to be seen.

Background

The applicant, Louis Vuitton Malletier, is a French fashion house and luxury retail company. In 2008, Louis Vuitton registered an International Registration for its Damier Azur mark, a chequerboard pattern, with the World Intellectual Property Organisation covering items in class 18 including luggage, bags, and leather goods etc. and designating the European Union.

Mark image article

In 2015, Mr Norbert Wisniewski, a Polish individual, challenged the validity of the mark by filing an application for invalidity with the European Union Intellectual Property Office (“EUIPO”). In 2016, the Cancellation Division of the EUIPO declared Louis Vuitton’s mark invalid based on Article 52(1)(a) EUTMR in conjunction with Article 7(1)(b) EUTMR. The Cancellation Division rejected Louis Vuitton’s claim that the mark had acquired distinctiveness through use in line with Article 7(3) EUTMR. Louis Vuitton contested this decision to the EUIPO’s Second BoA but was unsuccessful.

Appeal to the General Court

In 2019, the matter was further appealed to the General Court of the CJEU. Here, Louis Vuitton essentially put forward two pleas:

  1. That the BoA had incorrectly approached the burden of proof in invalidity proceedings by compensating for the absence of strong and conclusive evidence provided by the cancellation applicant by instead relying upon questionable ‘well-known facts’ when assessing the inherent distinctiveness of the Damier Azur mark; and
  2. That the BoA had erred in its assessment of the acquired distinctiveness of the mark through use.

‘Well-known facts’

The GC recognised that in invalidity proceedings in respect of EU trade marks, the starting point is a presumption of validity. Accordingly, challengers to the validity of a trade mark bear the burden of proof and must provide evidence for the consideration of the EUIPO.

Louis Vuitton argued that the evidence provided by Mr Wisniewski was sparse and lacked probative value, and that the BoA had compensated for this inadequate evidence by basing its decision on ‘well-known facts’ instead, which were not necessarily accurate.

In response, the GC set out that, whilst the EUIPO typically limits its assessment to the evidence provided by the applicant for invalidity, this does not preclude the Office from – in addition to the arguments and evidence invoked by the invalidity applicant - taking into account ‘well-known facts’ to substantiate its examination. Doing so was not contrary to the rules on the burden of proof.  The BoA was permitted to consider the fact the Damier Azur mark was a “basic and commonplace pattern that did not depart significantly from the norms and customs” of the fashion industry.

Acquired distinctiveness

When addressing the mark’s acquired distinctiveness the BoA had divided all EU Member States into three groups. As the BoA considered the evidence of acquired distinctiveness relating to the territory of EU Member States in group 3 insufficient it had found that there was no need to pursue an examination of the evidence filed in support of acquired distinctiveness in the territories covered by the EU Member States in groups 1 and 2. Louis Vuitton argued that the BoA had incorrectly limited its analysis to a restricted set of evidence.

In coming to its conclusion, the GC pointed out that:

  1. trade marks which are accepted on the basis of acquired distinctiveness through use would, initially, have been inherently invalid;
  2. the burden to prove acquired distinctiveness through use is on the trade mark proprietor;
  3. the use made of the mark must have originated from a particular undertaking;
  4. a variety of factors determining use of the mark must be taken into account (e.g. market share held by the mark; intensity and geography of use, etc.);
  5. distinctive character may be achieved by use of the mark in conjunction with another registered trade mark; and
  6. the mark must have distinctive character throughout the European Union.

However, following the CJEU judgement in Lindt v OHIM,[3] the GC confirmed that it would be “unreasonable to require proof of […] acquisition [of distinctiveness through use] for each individual Member State”.  The GC reiterated the CJEU’s decision in Nestlé;[4] namely:

that the evidence provided to establish that a particular sign has acquired distinctive character through use is relevant with regard to several Member States, or even to the whole of the European Union. In particular, it is possible that, for certain goods or services, the economic operators have grouped several Member States together in the same distribution network and have treated those Member States, especially for marketing strategy purposes, as if they were one and the same national market. In such circumstances, the evidence for the use of a sign within such a cross-border market is likely to be relevant for all of the Member States concerned. The same is true when, due to a geographic, cultural or linguistic proximity between two Member States, the relevant public of the first has a sufficient knowledge of the products and services that are present on the national market of the second.”

In the case of a mark that does not have inherent distinctive character throughout the European Union, the distinctive character acquired through use of that mark must be shown throughout that territory, and not only in a substantial part or the majority of the territory of the European Union, and consequently, although such proof may be produced globally for all the Member States concerned or separately for different Member States or groups of Member States, it is not, however, sufficient that the party with the burden of providing such evidence merely produces evidence of such acquisition that does not cover part of the European Union, even a part consisting of only one Member State.”

As the BoA had only selected and examined pieces of evidence relating to the group 3 Member States and had, without explanation, excluded other evidence which was relevant globally to all Member States (including those in group 3), the GC found that the BoA had erred and should have undertaken an overall assessment of the evidence provided by Louis Vuitton. The GC therefore determined that the BoA had failed to comply with what is now Article 59(2) of the EUTMR as well as the relevant case law and consequently annulled the decision of the BoA.

Concluding thoughts

The decision is a reaffirmation of the EU’s rigorous approach to assessing the unitary character of EU trade marks, with the GC emphasising the need for distinctiveness, inherent or acquired through use, throughout the EU. This is a high and often very challenging requirement for applicants. So, although the GC annulled the BoA’s decision on the basis of improper assessment of the evidence, it remains open whether or not the excluded evidence would be sufficient to prove acquired distinctiveness. The outcome for Louis Vuitton’s Damier Azur pattern is therefore yet to be seen.

Article co-authored by Fareed Anees.



[1] Case T-105/19, Louis Vuitton Malletier v EUIPO, EU:T:2020:258.

[2] Case R-274/2017-2.

[3] Case C-98/11 P, Chocoladefabriken Lindt & Sprüngli AG v OHIM, EU:C:2012:307.

[4] Cases C-84/17 P, C-85/17 P and C-95/17 P, Société des produits Nestlé and Others v Mondelez UK Holdings & Services, EU:C:2018:596.