On 21 April 2015 the General Court issued two parallel judgments in cases T-359/12 and T-360/12, confirming the declaration of invalidity of Louis Vuitton’s two Community trademarks, consisting of chequerboard patterns, characterised by weft and warp structures, in brown and beige and in light and dark grey, as shown below:
According to the Court, such trademarks, which were registered in 1998 and 2008 in relation to leather goods, bags and travel cases within class 18, lacked of distinctive character and should not be validly registered, pursuant to Articles 51(1)(a) and 7(1)(b) of Regulation 207/2009.
In particular, the Court held that the Cancellation Division and the Board of Appeal had correctly applied the case-law developed in respect of three-dimensional marks also to figurative marks, as the patterns in question were in fact destined to cover a part or the whole surface of the goods.
Coming to the assessment of the inherent distinctive character of the two figurative trademarks, the Court found that the chequerboard pattern is a basic and commonplace figurative pattern, since it is composed of a regular succession of squares of the same size, which are differentiated by alternating different colours (i.e. brown and beige or two different shades of grey). Also, the patterns were found not to contain any notable variation in relation to the conventional representation of chequerboards and were deemed to have an indisputable link with the goods in class 18, as they had been commonly used in the decorative sector (in particular, clothes and floor tiles).
On the other hand, the weft and warp pattern that appears on the inside of each of the chequerboard squares, having the desired visual effect of interlacing two different fabrics, was found to be customary as regards goods within class 18 and to play a mere decorative function, rather than be considered as an indicator of origin. In addition, the fact that the trademarks in hands were copied by third parties did not mean that the public could distinguish Louis Vuitton’s goods including the patterns in the absence of Louis Vuitton’s logo and house mark.
As to acquired distinctiveness, the evidence submitted by Louis Vuitton was found insufficient to prove that its marks had acquired a secondary meaning through their use in a substantial part of the EU at the time of the filing or registration of the trademarks.
The decision in hands confirms the difficulties for the fashion industry to protect patterns exclusively consisting in geometric figures, in the absence of word or alphabetic components or satisfactory evidence of acquired distinctiveness. This is also consistent with a number of Italian precedents in the fashion field, where trademark protection was denied on the same grounds to the Burberry’s check, to the Gucci’s Flora pattern and to Louis Vuitton cuir-epi pattern. It is still in doubt, in the present case, whether the graphic representation of the trademarks applied before OHIM was sufficient to show that Louis Vuitton’s chequerboards actually consisted of an unusual “pattern within a pattern”, as pointed out by the applicant. For further information on other famous fashion pitfalls regarding patterns registered as trademarks, please contact Elena Varese (elena.varese@dlapiper.com).
