Is Louis Vuitton’s Damier Azur pattern distinctive enough to be a trade mark?
Vuitton's Damier Azur
At that time, the GC concluded that, while the EUIPO Second Board of Appeal had been right in ruling out inherent distinctiveness of the mark at issue, it had also failed to undertake a proper evaluation of the evidence submitted by Vuitton in support of a claim of acquired distinctiveness of the mark, which is the subject of an international registration inter alia designating the EU territory, in relation to class 18 goods.
So, after that, the matter went back to Alicante.
Then, in 2021, the Fifth Board of Appeal concluded (R 1307/2020-5) that Vuitton’s evidence was essentially not good enough to support a finding of acquired distinctiveness. In particular, the Board considered that Vuitton had failed to demonstrate acquired distinctiveness in relation to the following EU Member States: Estonia, Lithuania, Latvia, Slovakia, Slovenia, and Bulgaria.
Inevitably, a new appeal to the GC did follow.
Let’s see more in detail how the GC reasoned.
Acquired distinctiveness and … proof thereof
The GC recalled that a mark can acquire distinctiveness through use. All this entails that the proprietor provides evidence demonstrating that “at least a significant proportion of the relevant public identifies the goods or services concerned as originating from a particular undertaking, because of that mark” (para 19).
The following aspects are to be considered when establishing whether distinctiveness has been acquired through use:
- 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;
- The proportion of the relevant class of persons who, because of the sign, identify the product as originating from a particular undertaking;
- Statements from chambers of commerce and industry or other trade and professional associations;
- Opinion polls.
As regards the geographic coverage of the evidence that needs to be provided, “with regard to a mark that is, ab initio, devoid of distinctive character in all Member States, such a mark can be registered pursuant to that provision only if it is proved that it has acquired distinctive character through use throughout the territory of the European Union” (para 24). That does not mean that proof is to be provided in relation to each of the EU-27 Member States: holding otherwise would be “unreasonable” (para 25). Nevertheless, it is necessary to prove acquired distinctiveness throughout the EU territory and not only a substantial part or the majority of such a territory (para 28).
Furthermore, there is a principle of unfettered adduction of evidence lawfully acquired, which entails that the only relevant criterion for the probative value thereof is its credibility, as a well as a principle of reasonableness in the burden of proof that can be imposed on the proprietor of the mark.
Application to the Damier Azur pattern
Having presented the relevant framework, the GC reviewed the approach taken by the Fifth Board of Appeal. It concluded that the Board had not erred in ruling out proof of acquired distinctiveness insofar as Estonia, Lithuania, Latvia, Slovakia, Slovenia, or Bulgaria are concerned.
Interestingly, the Court also rejected Vuitton’s argument that the analysis carried out by the Board would be “detached from reality, since it ignores the fact that, throughout the European Union, consumers engage in homogeneous behaviour as regards luxury brands, particularly because they travel and use the internet regularly.” (para 135) According to the GC, such an argument would be “too general in nature” since it is for the mark proprietor to “adduce specific and substantiated evidence for that purpose”.
The Court also dismissed – as unsubstantiated – the claim that Latvia and Lithuania would be geographically and culturally close to Poland and Sweden (Member States for which evidence of acquired distinctiveness was accepted), while Bulgaria, Slovakia and Slovenia would be close to Romania (another Member State where acquired distinctiveness would subsist).
Today’s decision is a must-read for all those who are interested and/or required to understand what makes something good or even simply acceptable evidence of acquired distinctiveness through use. On an anecdotal level, it is quite telling of the difficulty of registering or, like in this case, maintaining the registration of a less conventional mark if even an undertaking like Vuitton has failed ...
Overall, it is clear once again that when it comes to marks of this kind distinctiveness – whether inherent or acquired – IS a real issue. As regards the former, readers will remember that just a few days ago I discussed the recent decision of the EUIPO Second Board of Appeal, which refused to consider the shape of the Dior Saddle bag distinctive enough to be a trade mark. Turning to the latter, today’s GC Vuitton decision clearly indicates that that path to a finding of acquired distinctiveness is by no means an easy (or even walkable) one either.
[Originally published on The IPKat on 19 October 2022]