The process of trademark registration could be much more complicated and longer than one might think. For example, it took 10 years for Lous Vuitton to prove that their trademark, a locking device, has a distinctive character.
On 15 May, 2014 m. The European Court of Justice analysed the case between Louis Vuitton and the Office for Harmonisation in the Internal Market (OHIM) by having maintained the previous decision of the General Court which states that the figurative trademark in question does have a distinctive character for a certain type of goods.
The story started back in 2005 when Louis Vuitton filed an application for their figurative trademark (2D) in classes 9, 14, 18 and 25 (Nice Classification). Friss Group International ApS filed an opposition for declaration of invalidity of the trademark at issue, since, according to them, it lacked a distinctive character in relation to goods it had been registered for. The opposition was rejected on the grounds that the trademark in question was recognised to a have minimal distinctive character necessary for the registration. Nevertheless, Friss Group International ApS filed an appeal subject to goods in classes 9, 14 and 18 which the Board of Appeal upheld. Specifically, the Board declared that the trademark at issue was devoid of a distinctive character and that the applicant Louis Vuitton failed to prove that the trademark had gained a distinctive character in the EU. However, Louis Vuitton brought an action for annulment of the decision before the General Court attempting to show that their trademark indeed had a distinctive character and was suitable for the registration.
The General court treated the trademark as a 3D mark, since the figurative mark consisted of the shape of the product. The court stated, that the trademark at issue lacked a distinctive character in relation to those goods that usually have locking devices, e.g. jewellery boxes, baskets or spectacle cases, yet it seemed to them that the mark did have a distinctive character in relation to goods that do not contain locking devices e.g. nutcrackers, candle holders, jewellery, watches, leather and its imitations, umbrellas, as these goods have no conceptual link to the locking device depicted in the trademark. The European Court of Justice agreed with these arguments and upheld the previous decision. According to the court, in this particular situation, the case law relating to 3D trademarks was necessary to be applied, since this trademark consists of the shape of part of the product depicted by the trademark itself. Finally, the court argued, that the relevant public would perceive this trademark as an interesting detail of the product, rather than an indication of its commercial origin. This decision reminds us that figurative marks (2D) are examined when they depict the goods themselves or at least their parts.