Louis Vuitton

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Luxury brand Louis Vuitton has been hit with a double blow after a European court invalidated two of its Community trademarks (CTMs) following a challenge by a German company.

The General Court ruled that the two CTMs, which protect the company’s ‘chess board’ pattern are used for leather products, had failed to acquire a distinctive character.

Louis Vuitton registered the first CTM, for a dark brown and beige pattern, in 1996. The second CTM, covering the same pattern but with black and grey colours, was registered in 2008.

The court ruled on both cases separately on Tuesday (April 21).

Retailer Nanu-Nana had opposed both CTMs in 2009, claiming that they had failed to acquire a distinctive character across all EU member states.

In July 2011, the cancellation division at the Office for Harmonization in the Internal Market (OHIM) agreed with Nanu-Nana’s challenges.

Louis Vuitton appealed against the decisions to OHIM’s First Board of Appeal in May 2012, but the division’s decisions were upheld.

In its appeal to the General Court, heard in March last year, Louis Vuitton argued that the board of appeal assessed whether the CTMs had acquired distinctive character from the wrong date.

The French brand said that the CTMs should have been assessed from 1996 [when the first CTM was registered], and only across the 15 member states that were part of the EU at the time.

Instead, the appeals board reviewed the CTMs from the date that Nanu-Nana had opposed them (2009).

Louis Vuitton also claimed that OHIM presented the applications as covering the chess board pattern broadly, rather than specifically that pattern used on leather products, and therefore said its applied-for marks had to reach a higher threshold of distinction.

But the court rejected these claims.

The court said that, from a graphic point of view, the presentation of a chess board in alternating colours does not “contain any notable variation in relation to the conventional presentation of such goods” and that the public would perceive it as a “commonplace and everyday” pattern.

The court continued: “It should be noted that the juxtaposition of two elements that are not in themselves distinctive cannot alter the perception of the relevant public as to the absence of distinctive character, ab initio, of the contested mark.”

It added that Louis Vuitton had failed to submit any evidence that the marks had acquired a distinctive character throughout the EU.

“The CTM has a unitary character, which implies that it shall have equal effect throughout the community. It follows from the unitary character of the CTM that, in order to be accepted for registration, a sign must have distinctive character throughout the EU,” the court concluded.

Louis Vuitton did not respond to a request for comment.

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