The trademark loss is a blow to Louis Vuitton, says trademark attorney.
Louis Vuitton trademarks dismissed
The EU General Court has dismissed two trademarks registered by Louis Vuitton related to its chequerboard pattern in what has been described as a "double blow" to the designer and a warning to all brand owners.
Louis Vuitton had been fighting to protect these marks since 2009.
What has happened?
- The EU General Court has cancelled two Community Trade Marks registered by Louis Vuitton;
- Following a challenge by a German retailer called Nanu-Nana, both registrations were found to be invalid;
- The first registration covered a dark brown and beige pattern and was granted registration in 1998;
- The second registration covered the same pattern but in black and grey and was registered in 2008;
- Both marks were registered for leather products and bags;
- In two decisions dated 21 April 2015, the General Court held that the registrations were basic and banal, and lacked distinctive character;
- The General Court held that the chequerboard pattern of which the marks consisted, was a basic and commonplace figurative pattern, and that it did not differ from the norm or customs of the sector for leather goods and bags;
- It was held that the public would perceive it as a commonplace and everyday pattern, and not as an indicator of trade origin;
- Louis Vuitton had submitted that the pattern was complex, particular and original and these arguments were dismissed by the Court;
- As the refusal applied across the entire EU, Louis Vuitton had to prove that consumers in every member state would relate the chequerboard marks back to Louis Vuitton. It was unsuccessful in doing so;
- The General Court held that it was right that the registrations should be cancelled.
Commenting on the ruling, Sharon Daboul, trademark attorney at intellectual property law firm EIP, said: “This trademark loss is a double-blow to Louis Vuitton. It can no longer claim to have a monopoly on the chequerboard pattern as applied to leather goods and bags, even if it was the first to come up with it.
"This loss might make it harder for the company to protect its bags against competitors or counterfeiters in the EU as it will no longer be able to rely on its trademark registrations.
"It also serves as a warning to brand owners that trademark registrations are not safe from challenge. An essential function of a trademark is to serve as a badge of trade origin. Trademarks must have distinctive character and a trademark loses its ability to be distinctive if it becomes commonplace in the trade; this can be as a result of the acts, or inactivity of the brand owner.
"If a trademark is allowed to become commonplace such that it can no longer distinguish a product from competitors, its value is lost and a pro-active third party can apply to cancel it."