For over six years Louis Vuitton, a French fashion house, has attempted to argue that their filed figurative mark consisting of a check pattern in brown and beige colours and resembling a chequerboard has a distinctive character.
On 21 April 2015 the EU General Court ruled that the figurative mark filed for registration lacked the distinctive character, and in this way closed the case between the Office for Harmonization in the Internal Market (OHIM) and Louis Vuitton.
The story goes back to 1996 when Louis Vuitton filed a CTM application for the figurative mark consisting of the check pattern in brown and beige colours for class 18 concerning the Nice Classification of goods and services. On 28 September 2009 Nanu-Nana Handelsgesellschaft mbH für Geschenkartikel & Co. KG filed a declaration for invalidity subject to all the goods protected by the registered CTM. Nanu-Nana argued that the contested trademark was of a descriptive nature and devoid of any distinctive character and had become customary in the current language or in the bona fide and established practice of the trade. In addition, the mark only consisted of a shape giving substantial value to the goods and was against public policy or accepted principles of morality.
On 11 July 2011 the Cancellation Division passed judgement favouring the declaration of invalidity of the trademark registration under the reasoning that this pattern was one of the most basic patterns used as a decorative element and therefore, the relevant public would see it only as a decorative drawing, rather than an indication to the origin of goods in question.
Cancellation Division’s decision was further upheld by the judgement of the Board of Appeal on 4 May 2012, according to which, the check pattern included in the contested trademark was a basic and banal feature composed of very simple elements and that it was well-known that the feature had been commonly used for decorative purposes in relation to various goods, including those falling within Class 18. It was also stated that the contested trademark was devoid of any elements capable of distinguishing it from other drawings representing the chequerboard and therefore, the trademark could not perform its main function, i.e. to identify the trademark or its origin. What is more, the weft and warp structure of the contested trademark was not regarded as the substantial feature of the trademark and did not give it a distinctive character. The Board of Appeal also added that the submitted arguments did not show that for the relevant public this pattern gave rise to the indication of the commercial origin of goods and that the trademark had acquired the distinctive feature due to its use.
After having analysed Louis Vuitton’s claim, the General Court dismissed their requests and upheld the decision of the Board of Appeal. In its decision, the General Court followed the reasoning of the Board of Appeal by stating that the trademark must be declared invalid due to the absence of the distinctive character.
To conclude, this judgement only confirms to the case-law under which the mark undergoing trademark registration not only needs to have the distinctive character and cannot be descriptive and indicate only the characteristics of the services or goods, but also must fulfil the substantial trademark function, i.e. it must help distinguish one company’s goods or services from the others.