Has LV’s chequerboard trade mark acquired distinctiveness?
Louis Vuitton suffered a further setback in relation to its figurative trade mark (pictured) for a chequerboard pattern after the EU General Court upheld an EUIPO invalidity decision.
LV obtained an international registration for the mark, which designated the EU, in November 2008. The mark was registered for goods in class 18 (including trunks, suitcases, traveling bags, luggage, satchels, handbags, briefcases and wallets). Mr Norbert Wisniewski subsequent filed an application for a declaration of invalidity.
In a decision in November 2018, the EUIPO's Second Board of Appeal found that the mark was inherently devoid of distinctive character and that distinctive character acquired through use had not been demonstrated. The EU General Court annulled that decision, saying that the Board had not examined all the relevant evidence of acquired distinctive character.
The case was sent back to the Fifth Board of Appeal, which re-examined the evidence and concluded that LV had not demonstrated distinctive character through use. On 19 October 2022, the EU General Court upheld that finding. This is a disappointing outcome for LV which helps demonstrate the difficulties associated with protecting non-traditional trade marks.
Acquisition of distinctive character in EU
Referring back to the Kit Kat decision, the General Court said though it is not necessary that the proprietor show acquisition of distinctive character through use in each individual member state, the evidence submitted must be capable of demonstrating acquisition thereof throughout the EU member states. It added:
“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.”
In this case, the Board examined whether the mark had acquired distinctive character through use in Bulgaria, Estonia, Latvia, Lithuania, Slovakia and Slovenia (all countries where LV had no stores). The Board said that only if acquired distinctiveness was demonstrated in these member states would it go on to examine other member states.
The Court found this approach was justified in the interests of procedural economy, that the Board examined all the relevant evidence and it carried out an overall assessment.
Moreover, it said the Board correctly assessed the evidence submitted, which comprised:
The value and market shares of the LV brand
Information on the history of the mark
Excerpts from catalogues, advertising and campaigns and media coverage
Statements concerning distribution of magazines containing adverts for goods bearing the mark in the member states concerned
Evidence of use on the internet
Evidence of infringement proceedings
The Court generally found that the evidence was either irrelevant, insufficient or too general. However, it said the Board was wrong to deny the high probative value of two statements affirming that LV had made intensive use of the mark in Estonia for goods in class 18, and that consumers in that country associated the mark with LV.
That, combined with other evidence, led the Court to find that acquired distinctive character had been demonstrated in Estonia. However, the finding regarding the other member states was upheld, and therefore acquisition of distinctive character through use in all the EU member states was not demonstrated.
A high hurdle
This judgment confirms the high hurdle for establishing proof of acquired distinctiveness set out in the Kit Kat case. However, in addressing what it saw as the deficiencies in LV’s arguments, the Court does provide some guidance for trade mark owners that find themselves in a similar difficult position.
For example, LV argued that consumers in the EU engage in homogeneous behaviour as regards luxury brands – but the Court said it must adduce evidence to prove that alleged fact.
Similarly, LV argued that the mark had acquired distinctive character in neighbouring countries, namely Poland, Sweden and Romania – but the Court said it had not provided evidence that the concerned member states were in the same distribution network or treated as the same market.
Finally, it noted that, while the burden of proof must not be unreasonable, “it was entirely open to the applicant to adduce various types and means of accessible evidence concerning either a single Member State or several Member States, taken together, or the whole of the European Union, provided it was sufficiently specific, substantiated and credible”.