The trademark protection of decorative patterns, across the EU, has presented itself as challenging when it comes to proving acquired distinctiveness of a brand. Previously, in 2015, Louis Vuitton had endured challenging proceedings, in relation to the invalidity of their chequerboard pattern, with the General Court (GC) ruling that not enough evidence was presented to demonstrate that the brand had acquired distinctive character within all EU Member States. However, the same could not be said for the Board of Appeal’s most recent decision regarding the brand, which had found another one of Louis Vuitton’s patterns to be invalid. Here the GC concluded that not enough satisfactory research had been carried out by the Board, in order to reach its conclusion of lack of distinctive character, throughout EU countries.
After Louis Vuitton argued that the Board of Appeal had incorrectly assessed the inherent distinctive character of the pattern, the GC considered whether the Board was able to base such assessment on ‘well-known facts’. The process of invalidity proceedings would require the applicant whom filed a declaration of invalidity to produce the evidence required for examination of the mark. However, this does not limit the Board from using well-known facts, observed by the EUIPO, as it wouldn’t contradict the rules of burden of proof for these to be taken into account, alongside the applicant’s argument. The GC considered whether the mark being a basic and commonplace pattern, which did not significantly depart from the norm, would be a well-known fact. Such facts are likely to be known or easily accessible, with the Board not being required to establish their accuracy. The GC found this to be a well-known fact, within its meaning in law, thus the first plea was rejected.
Louis Vuitton had also argued that the Board of Appeal erred in its overall evaluation of the distinctive character of the brand. In its assessment, the Board had divided all EU member states into three different groups, placing emphasis on group 3, which included countries such as Bulgaria, Estonia, Latvia and Slovakia. The restricted research excluded all other possible evidence, leading the Board to decide that the brand, both individually and as a whole, had not demonstrated distinctive character. It was necessary for the evidence in question to cover all parts of the EU, however, it excluded important considerations of acquired distinctiveness (geographically widespread use of the mark). As the Board of Appeal failed to comply with Article 59 (2) EUMTR, its decision was annulled.
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