Louis Vuitton Trade Mark ‘Locked Out’ by European Court of Justice

30 October 2014

Author: Helen Cosgrove
Practice Area: Intellectual Property

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The underlying premise for registering any trademark is that it acts as a badge of origin distinguishing the goods of one undertaking from another. Intellectual Property laws have developed to allow the registration of sounds, smells, colours, and even 3-Dimensional marks, yet in order to safeguard against monopolies with regards the aforementioned marks, the law has taken a significantly more stringent approach to finding them registrable than ordinary 2-Dimensional words, phrases, and images.

Case background

In the case of Louis Vuitton Malletier v Office for Harmonisation in the Internal Market, Louis Vuitton “LV” registered a figurative mark consisting of a two-dimensional image of a locking device for such goods as spectacle cases, trunks and jewellery.  The registration was challenged by Friis Group International on the basis that the trade mark lacked distinctive character. Initially the Office for Harmonisation in the Internal Market rejected Friis’ application but that decision was successfully appealed and the entire registration was declared invalid.

LV appealed in relation to the goods in classes 9, 14 and 18 and the European General Court “EUGC” partially allowed the appeal, reinstating the registration in respect of some of the goods at issue in classes 14 and 18 which did not seem likely to incorporate a locking device, such as candlesticks, nutcrackers and leather.

LV appealed to the European Court of Justice “ECJ” on the grounds that:

·  The EUGC erred in law when it applied case law relating to three-dimensional marks.

·  The EUGC infringed the rules relating to burden of proof and distortion of evidence.

Decision

The ECJ dismissed LV’s appeal and found that while the mark was registered as a figurative 2-Dimensional mark, it was to be designated to goods that were to be in the 3-Dimensional form, and as such the EUGC was correct in their initial assessment of distinctiveness following the 3-Dimensional line of authority.

The ECJ agreed that for goods which did not traditionally contain locking devices, the mark had gained distinctiveness as it was unusual. Yet for goods which would normally contain locking devices, this mark would not act as a badge of origin, but more so a ‘particularly interesting or attractive detail of the product.’ Essentially the relevant public would not be surprised that the goods had a clasp lock on them and as such would not ‘depart significantly’ from the good itself to act as a badge of origin to LV.

Conclusion

This seminal case for Intellectual Property law demonstrates that the more a mark resembles the product that will bear it, the less likely it is that the mark will have distinctive character.  In this case the mark sought by LV was considered non-distinctive, as the locking mechanism is of a fairly unremarkable shape and configuration.

The ECJ confirmed through this case that the same test (of considering whether the shape departs from the norm) applies to all marks, regardless of whether they are 3-dimensional shapes or 2-dimensional drawings of photos of the entire product, or part of it.  It is therefore important to get a trade mark right at the outset, whether it be a shape, word, graphic representation, because even if the trade mark progresses to registration, it is still vulnerable to a claim of invalidity by a third party.

For more information, please contact Helen Cosgrove.

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