In a dispute that has been ongoing since 2009, Louis Vuitton has finally lost two Community Trade Mark registrations for its well know 'checkerboard' pattern. The figurative marks both consist of a chequerboard pattern, one in brown and beige the other in light and dark grey. The marks were invalidated on application by German retailer, Nanu Nanu.
Louis Vuitton's registrations covered a range of goods in class 18 including "goods made of leather, trunks, travelling bags, handbags, beach bags, shopping bags, shoulder bags and purses."
Nanu-Nanu filed applications for invalidity relating to all goods covered by Louis Vuitton's figurative marks in accordance with Article 52(1)(a) and Article 7(1)(b), (c), (d), and (f) of Community Trade Mark Regulation No 207/2009.
The invalidity applications claimed that the figurative marks were descriptive, devoid of any distinctive character, customary in the bona fide and established practices of the trade, consisted exclusively of the shape which gives substantial value to the goods, contrary to public policy or to accepted principles of morality and filed in bad faith.
The Cancellation Division at OHIM held that the marks were applied to the goods as decoration rather than as an identification of commercial origin and that the mark did not depart significantly from the norms or customs of the sector.
Louis Vuitton tried to convince the Cancellation Division that the marks had acquired distinctiveness by filing evidence of use. However, the evidence showed use in only some member states and not a substantial part of the EU.
Louis Vuitton appealed the Cancellation Division decision but the Board of Appeal upheld the decision.
Appeal to the General Court
The General Court held that the Board of Appeal correctly invalidated the marks. Despite being in use for around 100 years, used mainly on luxury handbags, the General Court held that the pattern is a basic commonplace and every day chequerboard pattern. Since Louis Vuitton did not present evidence of the use of the marks in some member states of the EU, the marks were considered invalid.
The CTM has unitary character and therefore has equal effect throughout the EU. Therefore, it should have distinctive character throughout the whole of the EU.
The chequerboard brand is already frequently copied and the decision will prevent Louis Vuitton from relying on its trade mark registrations against counterfeiters and competitors.
The decision is a warning to brand owners that a CTM registration is vulnerable to cancellation. If a trade mark is allowed to become commonplace in the market it loses value and may be invalidated by a third party.
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