27 Oct 2022

Last week the European Court gave a decision that Louis Vuitton had been fighting to avoid since 2015.

The Court decided that Louis Vuitton’s “Damier Azur” chess board pattern lacked the required distinctiveness to be a registered trade mark in the EU.  

Unless Louis Vuitton appeals it will no longer have trade mark protection for the pattern which is used on accessories such as handbags and purses as well as other goods.

The pattern lacking the required distinctiveness

Acquired distinctiveness requires that a significant proportion of the relevant public seeing the trade mark would identify the accessories as originating from Louis Vuitton.

For this purpose a range of factors are considered, including market share, the amount invested to promote the trade mark and “how intensive, geographically widespread and long-standing” the use has been.

An important factor for Louis Vuitton was to prove acquired distinctiveness throughout the EU.

It was recognised that it would be “unreasonable” to provide proof for each individual EU member state and that evidence could apply to multiple EU member states. For example, Louis Vuitton could have grouped certain EU member states together and acted as if they were one distribution network.

Alternatively a “geographical, cultural or linguistic proximity” could mean that the public in one EU member state is sufficiently aware of goods in another EU member state. In contrast the submission of evidence for a substantial part or a majority of the EU or covering all EU member states bar one would not be sufficient.

The General Court ruled that the evidence provided was insufficient, particularly in respect of Lithuania, Latvia, Slovakia, Slovenia, and Bulgaria.

Louis Vuitton argued that “consumers engage in homogenous behaviour as regards luxury brands” throughout the EU due to travel and the internet. However, this was rejected as “too general”.

The Court also decided that Louis Vuitton had not sufficiently substantiated its argument that geographical and cultural proximity meant the evidence for Poland and Sweden could apply to Lithuania and Latvia and evidence for Romania could apply to Slovakia, Slovenia and Bulgaria. As a result acquired distinctiveness had not been shown throughout the EU.

Acquired distinctiveness in the UK

The EU covers 27 member states and showing acquired distinctiveness sufficiently throughout the EU appears to be difficult (for example, as shown by Nestlé in respect of an unbranded four finger Kit Kat chocolate bar.)

In contrast, for the UK (which has the same legal requirement that a mark that is “devoid of distinctive character” cannot be registered, unless it has acquired distinctive character through use) it may be slightly easier to register trade marks as evidence of acquired distinctiveness must be shown throughout the UK only.

Evidence for a certain region only (such as Scotland) would not usually suffice. But this does not mean that evidence is needed for every UK city.

Further, the guide issued by the UK Intellectual Property Office provides an example of a trade mark for a Welsh word. This may only require evidence of acquired distinctiveness for a substantial proportion of those who speak Welsh in Wales. Therefore, in theory, it may be easier to meet the territory threshold for acquired distinctiveness in the UK.

Why apply for a trade mark?

Increasingly businesses are applying to register non-traditional trade marks such as shape, colour or sound marks. From October 2017 (in the EU) and January 2019 (in the UK), it has no longer been a requirement that trade marks must be able to be represented graphically (for example, shown as a word or logo).

As examples, the relevant UK and EU laws state that a trade mark may include designs, colours, sounds, etc. Accordingly, the requirement is now that the trade mark is capable of:

  • distinguishing the goods/services of one undertaking from another; and 
  • being represented in a way that means the subject matter of the protection is clear and precise.

As a result, businesses are applying to register designs as trade marks. This is because a design registration:

  • lasts for a maximum of 25 years (if renewed every five years); a trade mark can be renewed indefinitely every 10 years;
  • has to be new and produce a different overall impression compared to any earlier designs available to the public; and
  • must be made within one year of the design entering the public domain which is not the case in respect of a trade mark. 

Take home point

Businesses with non-traditional trade marks (that can be shown clearly and precisely, and are able to sufficiently distinguish the business’s goods / services as originating from its business) should consider applying to register them whilst at the same time remembering that design registration (if relevant) may provide an easier way to securing intellectual property registration.

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