Luxury of Perspective on Patterns

Two recent decisions (conjoined cases T-359/12 and T-360/12), in which the General Court upheld the decision of the OHIM Board of Appeal to declare invalid two CTM registrations owned by Louis Vuitton, remind us of the difficulties brand owners face in securing trade mark protection in the EU for surface patterns. Nanu-Nana attacked the validity of the registrations and the General Court found Louis Vuitton’s figurative marks, each consisting of a chequerboard pattern with warp and weft detailing and registered in respect of various class 18 goods (bags, leather goods, cases, etc.), to be lacking in distinctive character. The decisions provide welcome confirmation that the principles for assessing the distinctive character of three-dimensional trade marks apply also to two-dimensional figurative marks which represent the product or part of its appearance. Although the criteria for assessing different categories of signs are in theory consistent, established case law holds that consumers perceive three-dimensional marks consisting of product appearance differently from signs unrelated to a product’s appearance. Louis Vuitton had admitted that the patterns at issue were intended to be placed on part of the goods or to cover the whole of their surface area. Consequently, they were deemed analogous with three-dimensional marks. In assessing inherent distinctiveness, the General Court held that the mere juxtaposition of two non-distinctive elements – the chequerboard pattern which was basic and commonplace in the decorative arts and the warp and weft detailing which was a desired visual effect and customary for the goods to which the sign applied – did not add up to an overall distinctive whole capable of indicating origin. Furthermore, the General Court refused to find that the patterns had acquired distinctive character on the basis that acquired distinctiveness had not been evidenced in some Member States. Absent evidence to the contrary, the perception of a figurative mark is considered to be the same in all Member States and the unitary character of CTMs dictates that a mark must be distinctive throughout the EU in order to qualify for registration. What Stobbs says: Whilst these decisions are hardly ground-breaking, they do provide useful clarification of how the inherent distinctive character of two-dimensional surface patterns is to be assessed and serve as a reminder of the enormity of the task confronting rights holders in proving acquired distinctiveness of figurative signs intended for pan-EU trade mark registration. In so doing, the cases also bring into focus the importance of selecting the most appropriate form of protection for IP assets. Had Louis Vuitton opted to protect the chequerboard surface pattern as a Community Design rather than as a CTM, it would only have needed to demonstrate that the pattern was novel and different from pre-existing chequerboard patterns commonly used on the articles in question, a simpler test than establishing distinctive character.

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