French luxury fashion house Louis Vuitton Mallettier (LV) has been at the centre of trade mark proceedings in relation to the distinctive character of its ‘Damier Azur’ trade mark.
In 2008, LV obtained an international registration from the World Intellectual Property Office (WIPO) for the following sign (international registration no 986207):
The mark was registered in Class 18 for:
“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”.
In 2015 Mr Norbert Wisniewski filed for an application of invalidity with the EUIPO for lack of distinctiveness of the mark due to the chequerboard pattern being “one of the oldest and most common patters in particular in respect of textile goods”. The basis for the declaration of invalidity was filed pursuant to Regulation No 207/2009, which now replaced by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017.
Mr Wisniewski put forward evidence of registered community designs and previous EUIPO decisions concerning other chequerboard registrations by LV that had previously been found not to be distinctive Case T-360/12 and Case T-359/12. The Cancellation Division upheld the application for the declaration of invalidity in 2016 on the basis that the mark was not distinctive. In 2017 LV filed a notice of appeal. The Board of Appeal dismissed the appeal in 2018 on the basis that the mark was not distinctive.
THE GENERAL COURT DECISION
The matter then went to the General Court. LV argued that the Board of Appeal contested the decision and made two complaints:
- The Board of Appeal had made an incorrect assessment of the distinctive character of the mark (inherent distinctiveness); and
- The Board of Appeal had made an error in the assessment of the distinctive character acquired through use of the mark at issue (acquired distinctiveness).
INHERENT DISTINCTIVENESS VS ACQUIRED DISTINCTIVENESS
The General Court in its decision on 10 June summarised inherent and acquired distinctiveness as follows:
Inherent distinctiveness: “only a mark which departs significantly from the norm or customs of the sector of the goods or services at issue and thereby fulfils its essential function of indicating origin is not devoid of any distinctive character for the purposes of Article 7(1)(b) of Regulation 2017/1001” .
Acquired distinctiveness: If a mark is not distinctive by nature, it is possible for a mark to acquire distinctiveness through use. “account must be taken, inter alia, of the market share held by the mark, how intensive, geographically widespread and long-standing use of the mark has been, the amount invested by the undertaking in promoting the mark, the proportion of the relevant class of persons which, because of the mark, identify the product as originating from a particular undertaking” .
The General Court upheld the Board of Appeal’s decision on inherent distinctiveness:
“As the Board of Appeal correctly stated in paragraph 73 of the contested decision, the chequerboard pattern is a basic and commonplace figurative pattern, since it is composed of a regular succession of squares of the same size which are differentiated by alternating different colours, one light and one dark, namely blue and beige. The pattern thus does not contain any notable variation in relation to the conventional representation of chequerboards and is the same as the traditional form of such a pattern. Even applied to goods such as those falling within Class 18” .
“As the Board of Appeal also correctly noted, in paragraph 75 of the contested decision, the weft and warp pattern that appears on the inside of each of the chequerboard squares corresponds with the desired visual effect of interlacing two different fabrics, of whatever type they may be (wool, silk, leather, etc.), which is thus customary as regards goods such as those within Class 18” .
The General Court concluded that the mark at issue was “a basic and commonplace pattern that did not depart significantly from the norm or customs of the sector concerned was a well-known fact within the meaning of the case-law cited in paragraph 30.”  and that the Board of Appeal could rely on well-known facts. As a result, the General Court rejected LVs plea in relation to inherent distinctiveness.
On the point of acquired distinctive, the General Court found that the Board of Appeal did not consider all of the relevant evidence put forward by LV. The Board of Appeal split Member States into three groups. Group 3 were EU Member States that had no LV shops. The Board of Appeal limited its analysis of evidence put forward by LV in relation to group 3.
LV submitted that “the Board of Appeal wrongly limited its analysis to certain evidence specifically concerning the Member States of group 3 and concluded that that evidence did not, individually or as a whole, demonstrate that a significant part of the relevant public, in those Member States, identified the goods at issue as originating from a particular undertaking because of the mark at issue. Lastly, the Board of Appeal found that since the mark at issue had not acquired distinctive character through use in group 3, there was no need to pursue the examination with regard to Member States in group 1 and those in group 2” 
The General Court on the point of the Board of Appeal assessing evidence mentioning group 3 countries in isolation, the Board of Appeal should have assessed the evidence relating to specific Member states (using Estonia as an example) “together with the evidence relating to the European Union as a whole or to a region of the European Union (for example eastern Europe) which may also be relevant to Estonia”. 
The General Court found that because the Board of Appeal hadn’t considered all of the evidence, for this reason, the Board of Appeal’s decision on acquired distinctiveness was annulled.
The General Court did not say whether LV had actually acquired distinctive character through use, so the mark could still be challenged, and the decision appealed.