“Damier” is French and means “checkerboard” or “chessboard”. And such a chessboard pattern is at the heart of a years long struggle of Louis Vuitton’s to secure it’s trademark rights in the pattern. LV calls its damier “one of the biggest successes of Louis Vuitton” and “a strong and recognizable pattern”. One can’t really argue about the first point, since the Damier spawned several offshoot checkered designs. But as with all things in trademark law, one definitely can wonder about the second part: is it strong? Is it recognizable? Is it … distinctive?
LV’S odyssey through the boards
Louis Vuitton Malletier started using its Damier mark as early as 1888. A mere 120 years later, in 2008, a counsel for Louis Vuitton registered a Union trade mark by way of international registration No 986207 with WIPO for this grey-beige chequered pattern.
Louis Vuitton registered the Damier Azur mark for the Nice Class 18 “Boxes made of leather or imitation leather, suitcases, suitcases, travel sets, travel bags, luggage, bags for clothes for travel, hat boxes made of leather, vanity cases, toilet bags, backpacks, satchels, handbags, Beach bags, shopping bags, shoulder bags, carrier bags, shoulder bags, belt bags, wallets, briefcases, briefcases, school bags, document holders, clutch bags, wallets, change purses, key rings, card cases, umbrellas, parasols”.
But this registration called the French maison’s opponents into action. A Polish businessman filed for cancellation on June 25th 2015. Norbert Wisniewski sought to formally invalidate Vuitton’s mark on the basis that the checkered print lacks the necessary distinctiveness to operate as a trademark (i.e. to identify the single source of the goods upon which it appears).
European judges ruling on LV, season 3
In December 2016, the Cancellation Division upheld the application for declaration of invalidity in respect of all the goods covered by the international registration, stating that there was no need to examine the absolute grounds for refusal. Louis Vuitton filed an appeal with the EUIPO Second Board of Appeal and in November 2018 the appeal was dismissed. The case then went to the EU General Court (EGC) and the decision has been issued on June 10th 2020. It is worth noting that prior to this, the General Court has found on two occasions that Louis Vuitton’s chequerboard pattern in different colours had not acquired a distinctive character in all of the EU Member States.
At least the judges opened a door for a future finding in Louis Vuitton’s favor. The EGC panel ruled, that Louis Vuitton’s beige-and-blue checkerboard Damier mark is not an inherently distinctive indicator of source, as it is “a basic and commonplace pattern that did not depart significantly from the norm or customs of the sector”. However, at the same time, the court asserted that the Board of Appeal only examined a small part of the evidence that Louis Vuitton provided to show that its mark has acquired distinctiveness in the EU (meaning that consumers have come to link the pattern with a single source).
Thus, the Luxembourg judges left both sides with a mixed bag.
The Mark’s inherent distinctiveness
In considering whether the Board of Appeal erred in its assessment of the “inherent distinctiveness” of Louis Vuitton’s chessboard pattern mark , the EGC found that “the mark at issue consists of a design which … covers its entire surface and thus corresponds to the external appearance of the goods”. The court held that “only a mark which departs significantly from the norm or customs of the sector of the goods or services in question, thereby fulfilling its essential function of indicating origin, is not devoid of any distinctive character within the meaning of Article 7 I (a) EUTMR” and may be protected as a trade mark”.
Here, the EUIPO argued that the checkerboard design has been generally known since time immemorial and the Damier design hardly differs from usual checkerboard designs. Louis Vuitton objected to this and complained that the EUIPO could not go beyond the grounds for invalidity put forward by the applicant, which were meagre. The court only partially confirmed this. Although there is a presumption of validity for registered EU trade marks (EGC, T 611/17 – Carrefour Hypermarchés), the Board of Appeal rightly held that the checkerboard design is a design which has always existed and is used in the decorative arts with an indisputable connection to goods in class 18.
“It is known”?
If EUIPO bodies decide to take known facts into account, they are not obliged to prove the accuracy of those facts in their decisions (EGC, T 238/15 – Novartis/EUIPO) The design does not differ significantly from the traditional representation of chessboards and corresponds to the traditional form of such a design. Consumers would in reality perceive only an everyday and commonplace pattern. The Board of Appeal rightly asummed this to be a well-known fact, the EGC held. While appellants may dispute the veracity of such well-known assumptions (EGC, T 451/11 – Gigabyte Technology/OHIM), this has not happened here. Therefore, there is no infringement of the appellant’s rights to equality of arms in the proceedings, to a fair hearing and to a right of defence.
Against that background, and even taking into account the weft and warp pattern appearing on the inside of each of Louis Vuitton’s chessboard squares, which produces the visual effect of interweaving two different fabrics, the Board concluded that the mark in question does not depart significantly from the norm or customs of the sector concerned and is therefore inherently devoid of any distinctive character within the meaning of Article 7 I (a) of the Trade Mark Regulation.
In addition, the issue was proof of use and acquired distinctiveness through use, Art. 59 (2) EUTMR.
The Board of Appeal had divided the EU Member States into three groups. Group 3 included all EU Member States in which Louis Vuitton did not have any shops. And since the evidence for Group 3 of the EU Member States was based on an extrapolation from Louis Vuitton, the Board of Appeal had examined, in particular, the evidence submitted in respect of those Member States. According to the Board of Appeal, it was impossible to draw conclusions from this as to the perception of the disputed mark by the relevant public in those Member States. Louis Vuitton submitted, in particular, that the Board of Appeal had not taken into account important further evidence.
Louis Vuitton stated that its positioning of the mark in the luxury segment and a focus of shops on central and most touristy areas of large cities and airports was in line with its brand strategy. Through websites and social media, the brand is nevertheless widely accessible and known throughout the EU. Goods bearing the mark at issue were displayed both on Instagram and on a corresponding Google search on the internet, including, for example, in Slovenia, one of the EU Member States in Group 3.
Furthermore, Louis Vuitton also claimed counterfeiting and piracy with the contested mark in a number of EU Member States. Nevertheless, the Board of Appeal did not want to acknowledge this, as this evidence not only showed the contested mark, but a complete imitation of the goods.
The Office had therefore only partially assessed the evidence submitted. This breached the principles laid down in ECJ C-84/17 – Nestlé/Mondelez, that an overall assessment of all the evidence submitted by the trade mark proprietor is necessary in order to accept or reject evidence of use.
A checkered future?
The decision highlights the challenges facing owners of trade marks which consist of fairly basic or commonplace patterns. There is a high risk that such marks lack inherent distinctiveness. It is usually necessary to demonstrate acquired distinctiveness through use in order to achieve (and maintain) a registration of this type.
The decision also serves as a reminder that when considering acquired distinctiveness of an EUTM one must do an overall assessment of all the evidence, throughout all of the EU. The Nestlé/Mondelez case set the bar high for trade mark owners proving acquired distinctiveness throughout the EU. Despite this being a win for Louis Vuitton, it was based on the Board of Appeal’s incomplete review of evidence. It therefore remains to be seen whether, on a correct review of the evidence, it leads to a finding of acquired distinctiveness throughout all Member States.