The General Court of the European Union has ruled out in the case T‑105/19, Louis Vuitton Malletier v Norbert Wisniewski.
It is an interesting case which concerns the following registered by Louis Vuitton figurative European trademark for class 18 ( boxes of leather or imitation leather, trunks, suitcases, traveling sets (leatherware), traveling bags, luggage, garment bags for travel, hat boxes of leather, vanity cases (not fitted), toiletry bags (empty), backpacks, satchels, handbags, beach bags, shopping bags, shoulder-strap bags, carrier bags, shoulder bags, waist bags, purses, attaché cases, briefcases (leatherware), school bags, document holders, clutch bags, wallets, change purses, key cases, card cases (wallets), umbrellas, sunshades):
Against this mark, an application for invalidity was filed by the Polish company Norbert Wisniewski based on absolute grounds – lack of distinctiveness.
The EUIPO concluded that the mark represents a checkerboard pattern in beige-black, which is an everyday pattern widely used by many.
Louis Vuitton appealed claiming that EUIPO erred in its conclusions not paying attention to important evidence.
The Court confirmed that the above mentioned pattern has low distinctive character.
However, the Court agreed that the EUIPO made some mistakes when assessing the pieces of evidence regarding the acquired distinctiveness related to the mark.
As it is well-known, evidence for acquired distinctive character over a trademark has to cover the territory of the entire EU.
Louis Vuitton separated its evidence into three groups, and the third group concerned countries where the company had no physical stores and official presents.
The EUIPO concluded that this is not sufficient and dismissed the claim for acquired distinctiveness.
The Court overturned this position stating that there is no need for submitting evidence for every single country if there are such that covers the whole territory of the EU.
Louis Vuitton had many internet and social media advertising campaigns that target all EU Member States. The fact that there were no stores in some countries doesn’t mean that consumers there are not aware about the brand or cannot buy it through internet for example.
What’s more, Louis Vuitton participated in different exhibitions, and in addition, there were many cases of seized counterfeit goods with the above trademark including in the countries from the third group, which comes to show that the consumers there have some information about the brand.
This decision is really important because gives some light on the issue with proving distinctive character which can be sometimes quite a challenge in the EU with its 27 Member States.