Louis Vuitton in General Court: fashion faux pas?

In Cases T-359/12  and T-360/12 , on 28 September 2009 Nanu-Nana& Co. KG – not unknown to GC cases (see here)- challenged not one, but two CTM registrations of Louis Vuitton Malletier (LV) registered for Class18 goods, including “boxes of leather or imitations of leather, trunks and travelling bags, travelling sets (leather goods), travel bags, vanity cases (not fitted), shoulder bags, briefcases (leather goods), etc” reproduced here

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370445 registered in 1998                  6587851 registered in 2008

OHIM background

The invalidity action was based on the entire range of absolute grounds : Nanu-Nana claimed that, in accordance with Article 52(1)(a) and Article 7(1)(b), (c), (d), (e)(iii) and (f) of Regulation No 207/2009, the contested CTM’s were descriptive and devoid of any distinctive character, had become customary in the current language or in the bona fide and established practices of the trade, consisted exclusively of the shape which gives substantial value to the goods and were contrary to public policy or to accepted principles of morality. It also claimed that LV had acted in bad faith when filing the application for the trade mark, within the meaning of Article 52(1)(b) of CTMR.

Both the Cancellation Division and the First Board of Appeal upheld the application for a declaration of invalidity on the basis of Article 7(1)(b) and Article 7(3) of CTMR.

First the chequerboard pattern is a basic and banal feature composed of very simple elements and it is well-known that that feature has been commonly used with a decorative purpose in relation to various goods, including those falling within Class 18. In the absence of features capable of distinguishing it from other representations of chequerboards, the contested CTM’s are not capable of fulfilling the essential ‘identification’ or ‘origin’ function of a trade mark. Furthermore, the weft and warp structure of the contested trade marks do not constitute a substantial feature and do not give it a distinctive character. Moreover, the fact that the weft and warp structure of those trade marks have been copied do not demonstrate that it acted as an indication of commercial origin for the relevant public. Therefore the contested trade marks are very simple and contained no element capable of individualising it in such a way that it would not appear as a common and basic chequerboard pattern. Moreover signs such as the contested trade marks are typically used as supplementary signs which coexisted beside the manufacturer’s house mark and, therefore, the trade marks are devoid of any distinctive character.

In addition the BoA considered that the documents produced by LV did not demonstrate that the relevant public would be in the habit of making an assumption on the commercial origin of the goods at hand based on patterns. Lastly, on the basis of the evidence provided by LV, it had not been established that the contested trade marks had acquired distinctive character through the use which had been made of it in a substantial part of the relevant territory, namely in Bulgaria, Denmark, Estonia, Latvia, Lithuania, Malta, Poland, Portugal, Slovenia, the Slovak Republic, Finland and Sweden, either at its filing date or after its registration (CTM 6587851) and in at least a substantial part of the European Union, namely Denmark, Portugal, Finland and Sweden ( for CTM nº370445).

LVs claims before the GC

  1. On the inherent distinctive character of the contested marks

LV did not contest the definition of the relevant public being the average consumer. Indeed it is not apparent from the description of the goods that they are luxury goods or so sophisticated or expensive that the relevant public would be likely to be particularly attentive with regard to them.

The Court then found that the Board rightly held held that the contested CTM’s coincided with the appearance of the products in question. Consequently, the BoA was fully entitled to base its assessment of the distinctive character of the contested marks on the principles regarding 3D marks applicable for a figurative mark consisting of a part of the shape of the product that it represents, inasmuch as the relevant public will immediately and without further thought perceive it as a representation of a particularly interesting or attractive detail of the product in question, rather than as an indication of its commercial origin (quoting this case-law as reported on Class 46).

The Court also found that it is clear from information contained in OHIM’s case-file that such a pattern has been commonly used in the decorative sector (in particular, clothes and floor tiles) and also appears in the Bayeux tapestry. On the other hand, the weft and warp pattern that appears on the inside of each of the chequerboard squares corresponds with the desired visual effect of interlacing two different fabrics, of whatever type they may be (wool, silk, leather, etc.), which is thus customary as regards goods such as those within Class 18.

Applied to the goods within Class 18 at issue, the presentation of a chequerboard in the alternating colours of light and dark grey and the impression of interlacing threads do not, from a graphic point of view, contain any notable variation in relation to the conventional presentation of such goods, so that the relevant public will in fact perceive only a commonplace and everyday pattern.

The juxtaposition of a chequerboard and of a weft and warp pattern does not give rise to any element that diverges from the norm or customs of the sector concerned; accordingly, LV’s submission that the contested mark is complex, particular and original cannot succeed.

  1. alleged breach by the BoA of the rules on the burden of proof

LV claimed that the burden rested on Nanu-Nana and the BoA cannot make up for the shortcomings of the applicant for a declaration of invalidity by relying on its own ‘general experience’ in order to rebut the presumption of validity of the registration of the contested marks.

However the Court also rejected this argument: the BoA had found that the chequerboard pattern was a basic and banal figurative feature composed of very simple elements was a well-known fact and also considered whether that finding was substantiated by the evidence relied on Nanu-Nana such as the use of the chequerboard pattern had been used in the decorative arts sector.

  1. On the alleged infringement of Article 7(3) CTMR

LV claimed it had demonstrated acquired distinctive character through use in at least 11 Member States, that number was, in LV's view, more than sufficient to meet the ‘substantial portion threshold’ which was different according to the CTM's: as of 2008, the UE had 27 Member States, and as of 1998 , the UE had 15 Member states.

Evidence submitted by LV consisted of the following (the Court's arguments with respect to most documents are below in blue)

‘Exhibit 1: a document called “Damier Canvas Trademark Portfolio”, which is a list of the CTM proprietor’s trade marks registered in different countries of the world.

– Exhibit 2: undated pictures of goods bearing the chequerboard design;

– Exhibit 3: print-outs of articles concerning famous pattern marks (Lady Dior Cannage, Gucci flora pattern, Burberry pattern);

– Exhibit4: a table with figures for the CTM proprietor’s products sold between 1996 and 2010, their turnover in euros and the total product quantity sold for the CTM in question, for the following countries: Belgium, Luxembourg, the Netherlands, Austria, the Czech Republic, Hungary, Romania, Cyprus, France, Germany, Greece, Italy, Denmark, Finland, Sweden, Portugal, Spain, Ireland and the United Kingdom; there was no other evidence to substantiate the information contained in that document, in particular other accounting documents certified by a firm qualified to certify those accounts, which could corroborate the figures set out in it.

– Exhibit 5: compilation of articles and advertisements from different magazines, showing products bearing the CTM proprietor’s chequerboard design. The magazines are from the following countries: France, Belgium, Luxembourg, Austria, the United Kingdom, Germany, Switzerland, the Netherlands, Spain, Sweden, Italy, the Czech Republic, Greece, Turkey, Norway, Hungary and Romania. Exhibit 5 further contains a Wikipedia entry about Louis Vuitton; AND Exhibit 7: list of Louis Vuitton stores. As regards the Member States of the European Union, the CTM proprietor’s stores in the following countries are listed: France, Austria, Belgium, Cyprus, the Czech Republic, Denmark, Finland, Germany, Greece, Hungary, Ireland, Italy, Luxembourg, the Netherlands, Portugal, Romania, Spain, Sweden and the United Kingdom; those docs do not provide any indication as to the perception of the contested mark by the public concerned.

– Exhibit 6: catalogues and brochures for Louis Vuitton products; The catalogues and brochures are provided only in French and English, so that, unless the applicant establishes that there are different versions of the catalogue, those catalogues and brochures cannot prove the acquisition of distinctive character through use at the very least for the Member States concerned. Furthermore, there is no evidence to show that those catalogues are distributed amongst the relevant public and are not an internal tool

– Exhibit 8: photographs of products with chequerboard designs not originating from the CTM proprietor, which are claimed to be imitations of the CTM proprietor’s products.’ photographs of various personalities carrying goods bearing the contested mark or advertisements of goods bearing that mark prove only that the applicant has used the brown and beige chequerboard pattern and do not demonstrate that the target public for the goods in question perceives that mark as an indication of commercial origin

  • Survey (see para. 18 and 54 of contested decision) did not cover the average consumer but only consumers of luxury goods in 5 Member States of the European Union, it does not in any way concern the perception of the contested mark but rather the Louis Vuitton mark itself, so that it gives no indication as regards the perception of the contested mark alone even by that limited public amongst whom the survey was carried out.

Furthermore,in the proceedings before OHIM, as the Board of Appeal correctly observed in paragraph 62 of the contested decision, LV never claimed that the items referred to above were intended to show that the contested mark had acquired distinctive character through use. In addition , in its statement dated 23 September 2010 before the Cancellation Division, in response to an argument made by Nanu-Nana which considered that LV claimed the acquisition of distinctive character through use, the applicant stated that ‘the proprietor never claimed that the contested mark [had] acquired distinctiveness through use’ and that ‘[it had] always maintained that the DAMIER [was] inherently distinctive, and [had] only [drawn] attention to the fact that such inherent distinctiveness was further increased through almost 15 years of extensive use’.

Finally, the material submitted by the CTM proprietor on appeal (see CD-ROM and letter of 9 November 2011) did not contains any element which completes the evidence submitted before the Cancellation Division as regards these Member States, in particular no elements which could be relevant in establishing the relevant public’s perception of the contested CTM in the above mentioned countries.

The General Court rejected LV's arguments and consequently dismissed the appeal.

For another fashion law "flop” in GC see Bottega Veneta's fate here

This case was also covered by our dear friends from IPKAT , see here 

Posted by: Laetitia Lagarde @ 12.13
Tags: General Court, Louis Vuitton,damier, chequerboard pattern, absolute grounds,
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May ETMR now available

The May 2015 issue of the European Trade Mark Reports (ETMR), a series of law reports published monthly by Sweet & Maxwell, is now available -- hot on the heels of the April issue, on which this weblog commented less than a fortnight ago. The ETMR contains English-language reports, together with informative headnotes, of recent decisions from national and EU courts and intellectual property offices.  

The ETMR usually contains reports on several decisions. This issue contains four cases:
* MIP Metro Group IP v Metro International SA, a ruling by the Controller of the Irish Patents Office in a keenly-fought opposition where both parties had an interest in word-and-device marks containing the word "Metro".
* Red Bull GmbH v OHIM, Sun Mark Ltd, a decision of the General Court of the European Union which addressed Red Bull's use of the BULL and RED BULL marks as a means of blocking the subsequent registration as a Community trade mark of the word BULLDOG.
* Speciality European Pharma v Doncaster Pharmaceuticals, in which the Court of Appeal, England and Wales, reversed the decision of the trial judge who had not permitted a restickering and repackaging of an imported product in which the manufacturer's UK mark was substituted for its French or German one.
* Supreme Petfoods, a High Court, England and Wales, decision in which the laudatory trade mark SUPREME was held both invalid and not infringed by a long-term non-confusing use in the hands of a competitor . 
MARQUES members are again reminded that, if they have been involved in European trade mark litigation which is of significant interest, and if they can provide an English-language text of the full decision of the court, the ETMR will be delighted to consider it for publication.
Posted by: Jeremy Phillips @ 14.44
Tags: ETMR,
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Meet the Judges in Dublin, City of Dracula and Stakeholders ...

Exactly one calendar month ago, Class 46 told readers about the excellent and very full programme that was on offer in the lovely, romantic city of Dublin on Friday 5 June. It's going to be one of the most complete MARQUES "Meet the Judges" events that has ever been held, with not only a good selection of judges taking part but also some seasoned trade mark practitioners.

Do take the chance to attend this excellent event which, if you have nothing to do when it ends, you may want to consider combining with a weekend in the magical city of James Joyce, Samuel Beckett, George Bernard Shaw, W. B. Yeats, Oscar Wilde and Bram Stoker -- creator of the notorious Count Dracula (this character gives a gory nuance to the meaning of the word "stakeholder" ...).

Posted by: Jeremy Phillips @ 22.59
Tags: Meet the Judges, Ireland,
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The new EU trade mark package: a chance to air your thoughts and ideas

Last night's Clas 46 blogpost briefly announced that the "trilogue" of major European Union institutions -- the Council, the Commission and the Parliament -- had reached agreement on the direction of the next round of EU trade mark law reforms.  Despite this agreement, there is still some way to go before the law changes, since there remains the leap from policy to practice, a leap which must be made through attention to legislative detail and a large amount of careful draftsmanship.

The voice of MARQUES has been heard throughout the reform process, since the organisation has taken an active part in the consultations and discussions that have helped shape the current package of legislative reform.

The MARQUES LinkedIn Discussion Group has just opened a discussion in which members are invited to make their comments on the current state of play and to identify any fresh issues, or new dimensions to old issues, about which we should be thinking when we look at the process of implementing the newly-agreed package.  Please feel welcome to contribute to it!

Posted by: Jeremy Phillips @ 18.48
Tags: trilogue, EU trade mark reform,
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Trilogue brings EU trade mark reform a little closer

The European Parliament, the Council of Ministers and the European Commission each issued statements today to the effect that they are in agreement regarding the direction of the policy for reform of the trade mark system in the European Union.  The proposed reforms are designed to reduce official fees, make the system more efficient and accessible, to facilitate action against counterfeit goods while they are in transit across the territory of the European Union and to rename the Office for Hamonisation in the Internal Market (OHIM) as the European Union Intellectual Property Office.

The Commission's statement is here

The European Parliament's statement is here

The Council's statement is here

Posted by: Jeremy Phillips @ 21.39
Tags: EU trade mark reform,
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General Court: Rauschbrille or drunk spectacles lack distinctiveness

In Case T-319/14, Drogenhilfe Projekt Köln gGmbH applied for the word CTM Rauschbrille for the following goods and services : Class 9: "Glasses";  Class 41: 'Education; training; entertainment; sporting and cultural activities "; Class 44: 'Medical services; services of a psychologist; clinical services; Medical clinic service; sanatoriums services; detoxification for drug addicts; health advice; therapeutic services”.

ang_rausch_03.jpg (300~209)Both OHIM and the General Court rejected the CTM application on the basis of Article 7, paragraph 1, b) and c) of Regulation No 207/2009 on the grounds that the mark was descriptive for those goods and services nor distinctive.

The relevant public consists of the German average consumers with a medium-high degree of attention. The applied for sign is composed of two terms of the German language, ie, on one hand, "Rausch" meaning drunkenness or intoxication or delirium and, on the other hand, "brille" meaning a frame with branches and two polished or colored glasses, such as ski goggles, diving or night vision. Thus, as to the "glasses" in Class 9, the German term "Rauschbrille" could be understood as "spectacles making one drunk" or " glasses protecting from drunkenness." It is apparent from the website of the applicant that this term actually refers to goggles that simulate approximately a high blood alcohol level.

Further, the German neologism "Rauschbrille" is not a fancy term, but is composed of exactly two words forming its elements. The word as a whole would not have a meaning beyond the sum of such terms, so it would be limited to describe the products and services concerned. Therefore, the mark is descriptive of the "glasses" in class 9 within the meaning of Article 7, paragraph 1 c) of CTMR.

As regards the absolute grounds for refusal under Article 7, paragraph 1 b) of CTMR,  the "glasses" in Class 9 are glasses recreating the intoxication state or placing the wearer in an artificial intoxication state. As regards the services in Class 41, the German term "Rauschbrille" could easily describe or refer to cultural events based on the theme of drugs. As for the services in Class 44, this term would convey the idea that as part of a medical and psychological treatment, the product sold under this name, is used to simulate intoxication and therefore part of an "aversion therapy". Moreover, those glasses are used as tool in courses in school or driving school on the theme of prevention of alcoholism and drug addiction, or as more complex tool as part of sports games and games of skill, so that sign could easily designate cultural events based on the theme of drugs or be construed as a reference to them. Thus the sign also lacks distinctive character.


Posted by: Laetitia Lagarde @ 09.52
Tags: general court, absolute grounds, Rauschbrille ,
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April's ETMR is now out

The April 2015 issue of the European Trade Mark Reports (ETMR), a series of law reports published monthly by Sweet & Maxwell, is now available. The ETMR contains English-language reports, together with informative headnotes, of recent decisions from national and EU courts and intellectual property offices.  

The ETMR usually contains reports on several decisions. This issue contains the following three cases:
* Mars Inc and others v Joseph Deters, Gedon Pet NV, a decision of the Commercial Court of Brussels, relating to infringement proceedings and a counterclaim for cancellation of a three-dimensional Community trade mark for an edible chew stick for dogs.
* Simba Toys Gmbh v OHIM, Seven Towns Ltd intervening, a difficult decision of the General Court of the European Union relating to the dismissal of an application for a declaration of invalidity for a three-dimensional sign for products including the Rubik's Cube.
* Enterprise Holdings Inc v Europcar Group, in which the High Court, England and Wales, had to resolve the competing claims and interests of two large litigants, both of whom used signs which principally featured the letter "e". 
MARQUES members are again reminded that, if they have been involved in European trade mark litigation which is of significant interest, and if they can provide an English-language text of the full decision of the court, the ETMR will be delighted to consider it for publication.
Posted by: Jeremy Phillips @ 09.20
Tags: ETMR,
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