Long held chequerboard trademark held by Louis Vuitton deemed not distinctive enough for protection by european courts.
In April 2015 the European Union General Court Second Chamber upheld the lower court’s decision to invalidate Louis Vuitton Malletier’s community trademark on their iconic brown and beige Damier chequerboard pattern.1 In short, the court held that the pattern was one of the most basic and banal decorative patterns2 and thus lacked, and had failed to acquire, distinctive character.3 In an industry rampant with counterfeiting, the courts decision further suppresses one of the most important and few forms of legal protection available to designers for protection of their creative designs.
The community trademark, held since 1998, consisted of a chequerboard pattern with a weft and warp structure intended to be applied to the surface of Goods made of leather or imitations of leather.4 This included: leatherboard, envelopes of leather for packaging; trunks, valises, travelling bags, travelling sets, garment bags for travel, vanity-cases, rucksacks, handbags, beach bags, shopping bags, shoulder bags, attaché-cases, briefcases, pouches, fine leather goods namely pocket wallets, purses, key-holders, card holders, checkbook holders, umbrellas, parasols, ombrelles, canes, and walking-stick seats.5 Upon its release, the Damier bag quickly grew to become one of the company’s most successful products.6 So much so that articles such as this Forbes piece entitled “How to spot a fake Louis Vuitton” are not uncommon publications.7
Despite the bag’s popularity, the court held that that pattern was one of the most basic patterns used as a decorative element and that such the relevant public would see it as a merely decorative element and not a sign indicating the origin of the goods in question.8 The trademark also failed to acquire distinctive character through the use which has been made of it in the European Union, namely Denmark, Portugal, Finland and Sweden.9 Furthermore, the trademark failed to depart significantly from the norms and customs of the sector.10 Absent any distinctive feature the trademark was unable to fulfill the identification or origin function of a trademark.11 The patterns placement along side the company’s house symbol was further proof that the trademark failed to meet the identification requirement.12 The court did not find the weft and warped structure of the contested trade dress sufficient to meet this requirement.13 Thus the court found that the trademark was very simple and had no element of individualization that would appear as not a common chequerboard pattern.14
Trademark law is one of the few areas of the law from which fashion designers have successfully attained a significant amount of protection for their designs. Of particular concern is the courts reasoning that the placement of the house symbol next to the pattern made the pattern less distinctive.15 This puts designers precarious position, as they now must scrutinize the placement of their house symbol or potentially risk invalidating trademark protection for some of their most distinctive patterns. This decision raises a great deal of concern with regards to the enforceability and validity of many existing trademarks in this space. Louis Vuitton held the trademark in question for approximately 10 years before it was challenged. Few companies are able to reach the level of popularity and notoriety that Louis Vuitton has attained. Furthermore, few products become as iconic and popular as the Damier bag. If a pattern as recognizable as this not sufficiently distinctive, it is hard to imagine what sorts of patterns would rise to that level.
Case T-359/12, Louis Vuitton Malletier v OHIM, 2015 E.C.R. Celex No. 612TJ0359.↩
Id. at ¶ 10.↩
Id. at ¶ 3.↩
Id. at ¶ 4.↩
Dhani Mau, Louis Vuitton Fails To Win Back Trademark For Chequerboard Pattern, Fashionista (May 1, 2015), http://fashionista.com/2015/05/louis-vuitton-checkerboard-trademark [https://perma.cc/8JYD-FNPX].↩
Hannah Elliott, How To Spot A Fake Louis Vuitton, Forbes (Nov. 11, 2010), http://www.forbes.com/sites/hannahelliott/2010/11/11/how-to-spot-a-fake-louis-vuitton/.↩
Case T-359/12, Louis Vuitton Malletier v OHIM, 2015 E.C.R. Celex No. 612TJ0359 ¶7.↩
Id. at ¶ 7.↩
Id. at ¶ 10.↩
See supra note 12.↩