25 October 2022TrademarksCatherine Wycherley

'A high bar': Louis Vuitton’s 'Damier Azur' TM loss

Louis Vuitton Malletier chequerboard EU trademark for Class 18 goods ruled invalid | Acquired distinctiveness through use not demonstrated.

In a loss for Louis Vuitton Malletier (LV), its ‘Damier Azur’ chequerboard trademark has not ‘acquired distinctive character through its use in all the member states of the European Union’, the EU General Court (GC) has ruled.

The tenth chamber of the court delivered the decision on October 19 in a ruling that lawyers have predicted could have significant implications for fashion trademark owners.

Commenting on the case, Rosie Burbidge, IP partner at Gunnercooke and author of European Fashion Law: A Practical Guide said the decision shows the difficulties facing brands when protecting simple patterns.

“More specifically, it demonstrates the challenges of proving acquired distinctiveness in relation to non-traditional marks. The fact that Louis Vuitton has struggled to prove acquired distinctiveness for such an iconic design, which has been associated with luggage for decades, demonstrates the high bar that others face to achieve and maintain a similar type of protection,” she explained.

“It offers a reminder to owners of complex trademark portfolios that even once a non-traditional mark is registered, it remains particularly vulnerable to an invalidity action based on absolute grounds.”


Back in 2016, the cancellation division EU Intellectual Property Office (EUIPO) found that LV’s figurative mark, for goods such as suitcases, luggage, handbags, and other ‘Class 18’ goods, was invalid.

LV lost its first appeal of that decision at the EUIPO second board of appeal in 2018.

But, in 2020, the court annulled that ruling on the grounds that the second board of appeal “had failed to examine all the relevant evidence submitted by the applicant in order to demonstrate the distinctive character acquired through use of the contested mark and to carry out an overall assessment of that evidence”.

In February 2021, the fifth board of appeal again ruled that LV had not proved distinctive character acquired through use for the mark in question. Notably, it emphasised that acquisition of distinctive character through use “must be shown throughout that territory, and not only in a substantial part or the majority of the territory of the EU”.

The board of appeal examined whether the contested mark had acquired distinctive character through use in Bulgaria, Estonia, Latvia, Lithuania, Slovakia and Slovenia (‘the member states concerned’), only committing to consider use in the other EU member states if distinctive character was proved in the initial examination.

Market share

That examination took account of: “the market share held by the mark, how intensive, geographically widespread and long-standing the use of the mark has been, the amount invested by the undertaking in promoting the mark”.

It also looked at the proportion of the relevant class of persons who, because of the mark, identify the product as originating from a particular undertaking, as well as statements from chambers of commerce and industry, other trade and professional associations as well as opinion polls.

Consequently, last week, the GC upheld the board of appeal’s decision that LV had not proved that the contested mark had acquired distinctive character through its use in Lithuania, Latvia, Slovakia, Slovenia or Bulgaria, although it ruled that acquisition of distinctive character had been demonstrated in Estonia—disagreeing with the board of appeal’s ruling.

In its decision, the court explained that evidence provided by the applicant concerning Lithuania, Latvia, Slovakia, Slovenia or Bulgaria did not “demonstrate that a significant part of the relevant public in those member states was exposed to the contested mark and would associate it with the applicant”.

It found that while that evidence shows that consumers from those member states may have been exposed to the contested mark, either it does not contain information as to the intensity of that use or it attests to insufficient use.

The court determined that evidence not specifically mentioning those member states, particularly on the internet and in previous infringement proceedings, also did “not provide any information as to the intensity of the exposure of the relevant public of those member states to the contested mark”.

Arguments ‘too general’

Although, the luxury brand argued that the fifth board of appeal’s decision ignored the fact that consumers in the EU “engage in homogenous behaviour” regarding luxury brands due to their regular travel and internet usage, the court dismissed that argument as “too general”, and stated that “given that the burden of proof of the acquisition of distinctive character through use lies with the proprietor of the mark, it is for the proprietor to adduce specific and substantiated evidence for that purpose”.

It also dismissed the applicant’s argument that geographical and cultural proximity meant that the Latvian and Lithuanian public would have sufficient knowledge of goods or services in the markets of Poland and Sweden and, similarly, the public of Bulgaria, Slovenia or Slovakia would have knowledge of the market of Romania saying that it had “not adduced any evidence to show” this.

The court also rejected as “too general” the argument that the fact that Bulgaria, Slovakia and Slovenia were “in a strategic area for the circulation of counterfeit products in Eastern Europe” to support the claim of distinctive character acquired through use.

In doing so, it dismissed LV’s bid to annul and alter the board of appeal’s decision and the luxury company was ordered to pay costs.

WIPR has approached LV for comment.

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