This isn’t the first time Louis Vuitton has had to defend a challenge in the EU against the validity of its Damier “chequerboard” pattern. In 2015, two of Louis Vuitton’s registrations were cancelled: the brown and beige and the light and dark grey colour combinations respectively. Both were found to be a commonplace, decorative pattern that were not capable of being perceived as a trade mark. Louis Vuitton’s argument that the sign had been used extensively throughout the EU, and consumers had been educated to see it as a trade mark, was also rejected. In 2020, Louis Vuitton was back in the General Court defending its Damier pattern again, in a colour named Azur. So what’s different this time?
This time around, Louis Vuitton had furnished a substantial amount of evidence, amounting to 68 exhibits. This was to try and prove that Louis Vuitton’s Damier Azur had come to be recognised as a trade mark because of the extensive use made of it throughout the EU. Not only did Louis Vuitton have evidence of its sales figures, market share data and invoices relating to the Damier Azur sign, it had photos of celebrities carrying leather goods bearing the sign, including Cameron Diaz, Victoria Beckham, Kanye West and Paris Hilton; adverts and mentions in magazines including Vogue and Marie Claire; reports on the number of references made to “Damier Azur” as a keyword on Twitter and Instagram; and statistics on foot traffic at airports where Louis Vuitton stores are located.
Instead of assessing all of the evidence provided, the Board of Appeal categorised the evidence by country into three groups. Group 3 was made up countries where Louis Vuitton didn’t have a physical store: Bulgaria, Estonia, Latvia, Lithuania, Malta, Slovenia and Slovakia. The Board of Appeal analysed the evidence in group 3 only and decided Louis Vuitton couldn’t show that the sign had acquired distinctive character throughout the EU.
One of Louis Vuitton’s grounds of appeal was that the Board of Appeal failed to assess the evidence as a whole. The General Court agreed. They reiterated that there is no requirement for evidence to be furnished in respect of each individual Member State of the EU and evidence can be grouped by countries that have geographic, cultural or linguistic proximity. The absence of a physical shop was not a valid reason for grouping. This factor does not necessarily prevent consumers becoming familiar with, and recognising, the mark as originating from Louis Vuitton by seeing the sign on websites, social media, catalogues or brochures, through online advertising or influencers, or in shops in the most central and popular tourist areas of major cities and airports. The matter will be referred back to the EU IPO for a decision.
Throughout its Judgment the General Court referred to the extensive amount of evidence of use provided by Louis Vuitton. Although not a requirement, Louis Vuitton had furnished evidence in every state that was a member of the EU at the time. . The EU IPO will now look at the evidence again and whilst success is not guaranteed, Louis Vuitton have won a second chance. The decision from the General Court shows just how useful it can be to keep a bank of evidence by year, which brand owners can rely upon in any future legal proceedings.
