The test for inherent and acquired distinctiveness of a Community trade mark

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The General Court has delivered a significant ruling on the invalidity of a Community trade mark for lack of distinctive character.

The case concerned Community trade marks registered in the name of Louis Vuitton. The marks comprised a chequerboard pattern characterised by weft and warp structures, one in brown and beige, the other in light and dark grey. The marks were registered for various goods in Class 18, such as bags, cases, leather goods.

The applicant for invalidity, Nanu-Nana, based its claims on several absolute grounds for refusal, including that the marks were descriptive and lacked distinctive character, that they were customary in the bona fide and established practice of the trade, and that they consisted exclusively of a shape giving substantial value to the goods.

The Cancellation Division and the Board of Appeal agreed that the marks should be cancelled as they were not distinctive; they consisted of a pattern that would be applied to the surface of the goods as decoration rather than identifiers of origin; and the patterns did not depart from the norms or customs of the sector.

The Board of Appeal held that the fact that the marks had been copied by competitors or infringers did not mean that the public would be able to distinguish Louis Vuitton’s goods covered in the chequerboard design from those of competitors.

Both the Cancellation Division and the Board of Appeal held that the evidence submitted by Louis Vuitton was insufficient to show that the marks had acquired distinctiveness through use in a number of EU Member States.

The General Court agreed with all of the Board of Appeal’s findings and dismissed Louis Vuitton’s appeal. On the lack of inherent distinctive character, the General Court considered the existing case law on the distinctiveness of 3D and figurative marks which coincide with the appearance of the products. This is to the effect that, in the absence of any graphic or word elements, such signs will only with difficulty identify a commercial origin, unless the design departs from the norms and customs of the sector. The Louis Vuitton designs did not; indeed, the design in question had a long association with goods in Class 18, where it was used for decorative purposes.

On the failure to adduce sufficient evidence of acquired distinctiveness, the General Court held that a mark cannot be distinctive if it is not distinctive in a part of the EU, given the unitary character of a Community trade mark. Since Louis Vuitton was unable to present evidence of the marks’ acquired distinctiveness in some Member States, the mark was invalid.

The ruling has been greeted with some surprise, given the ready association of the chequerboard pattern with Louis Vuitton. It is possible that Louis Vuitton may appeal to the Court of Justice of the European Union.