Louis Vuitton is one of the most famous fashion houses in the world. The brand was officially founded in 1984 when Louis Vuitton opened a workshop in Paris, producing travel trunks. This event gave rise to the history of the popular brand. The most famous pattern: Monogram Canvas was designed by Vuitton’s son, Georges in 1896, who took over the company from his father and introduced it to foreign markets. The Louis Vuitton product collection was gradually expanded, including handbags and other accessories. Louis Vuitton’s son also created the famous checkerboard pattern “Damier Canvas” in 1888, along with the logo with the inscription “marque L. Vuitton déposée”.

The checkerboard pattern has been registered as a trademark in various forms. The mark has been protected by, among others, the European Union Intellectual Property Office and WIPO. The brown and beige version has been registered by the EUIPO as an EU trademark number 000370445 in the following graphic form:

This mark is protected in class 18 for, among others, such goods as leather goods, bags, cosmetic cases, backpacks, handbags, beach bags, purses.

The Chessboard is also the subject of international registration number 0986207 at WIPO designating the European Union (having the same effect as registration of an EU mark). The mark is protected in the following form in respect of the above goods:

Louis Vuitton Malletier is conducting a series of disputes over the protection of the above trademark rights. As a result of ongoing infringement proceedings, entities attacked by the famous fashion house, seeking means of defense, have attempted to destroy the trademarks. The trademark protection system allows for the invalidation of a registered right in a situation where the necessary conditions for obtaining protection have not been met.

The application for invalidation was first filed by the German company Nanu-Nana, which mainly sells household goods. The application concerned the above EU trademark, in the brown and beige version, number EUTM 000370445. In this case, the applicant relied on the so-called absolute obstacles to registration, i.e. the fact that checkerboard patterns do not have distinctive character and therefore cannot indicate the source of origin of the goods (they are not capable of performing the function of a trademark). As a result of the proceedings, the trademark was invalidated. Both the Cancellation Division and the Board of Appeal of the EUIPO found that the brown and beige checkerboard trademark is one of the most basic patterns used as a decorative element, which means that the relevant public will perceive it simply as a decorative motif and not as a sign indicating the origin of the goods in question, and that regardless of everything, the disputed trademark does not significantly deviate from industry norms or customs. However, the documents submitted by the trademark holder do not demonstrate that, on the date of application or after registration, the trademark acquired distinctive character as a result of the use of that mark in at least a significant part of the European Union. This decision was confirmed by the General Court, which dismissed Louis Vuitton Malletier’s complaint in its judgment of 21 April 2015 (General Court judgment in case T–359/12). Ultimately, however, Louis Vuitton filed an appeal to the Court of Justice (CJEU), which unfortunately did not manage to decide the case. The parties reached an agreement at that stage of the proceedings and the application for invalidation was withdrawn.

The chessboard case has returned after many years. This time, the entity initiating the invalidation proceedings for the chessboard pattern mark no. 0986207 is a Polish entrepreneur. Two judgments were issued in this case by the Court of the European Union.

In the first judgment of 10 June 2020 (case reference number T 105/19), the Court considered the appeal of Louis Vuitton against the decision of the Board of Appeal of the EUIPO, which invalidated the above trademark, indicating that it did not have any inherent distinctive character.

In the contested decision, the Board of Appeal noted that only a trade mark which departs significantly from the norm or customs prevailing in the sector of the goods and services in question, and thus fulfils its essential function of indicating origin, is not devoid of distinctive character within the meaning of Article 7(1)(b) of Regulation 2017/1001. As the Board of Appeal found, the checkerboard pattern is a basic and commonly used graphic design, since it consists of a regular sequence of squares of the same size, which are differentiated by the alternating presence of different colours, one light and one dark, namely blue and beige. The pattern therefore does not present any noticeable differences in relation to the conventional representation of a checkerboard and is the same as the traditional form of such a pattern. Even in the case of goods such as those in Class 18, the design in question does not depart significantly from the norm or customs prevailing in that sector, since those goods are usually covered with various types of fabric and the checkerboard pattern, due to its great simplicity, may constitute one of those patterns. The Board of Appeal found that the chequerboard pattern is one of those which has always existed and been used in the decorative arts, which has an indisputable link with the goods in Class 18 (decision of the Board of Appeal in case R 274/2017-2, to that effect judgments of 21 April 2015, Representation of a chequerboard pattern in grey, T-360/12, not published, EU:T:2015:214, paragraphs 37 and 38, and of 21 April 2015, Representation of a chequerboard pattern in brown and beige, T-359/12, EU:T:2015:215, paragraphs 37 and 38). The Board of Appeal also correctly found that the juxtaposition of two elements, which were not distinctive in themselves, was not capable of changing the perception of the relevant public as to the lack of distinctiveness of the contested mark as a whole. The combination of a chequerboard pattern and a warp and weft pattern does not create any element which departs materially from the norm or customs prevailing in the sector concerned (see, to that effect, judgments of 21 April 2015, Representation of a chequerboard pattern in grey, T-360/12, not published, EU:T:2015:214, paragraph 41, and of 21 April 2015, Representation of a chequerboard pattern in brown and beige, T-359/12, EU:T:2015:215, paragraph 41).

However, by judgment of 10 June 2020, the General Court annulled the Board of Appeal’s decision due to procedural errors concerning the omission of certain evidence submitted by Louis Vuitton in relation to the acquisition of distinctive character through use (so-called secondary distinctiveness). According to the General Court, the Board of Appeal failed to conduct a comprehensive assessment of all the relevant evidence submitted by the applicant, regardless of whether it referred to the European Union as a whole, to groups of Member States or, more specifically, to a specific Member State, which was potentially relevant for the purposes of assessing whether the contested mark had acquired distinctive character through use.

After the decision was annulled, the European Union Intellectual Property Office re-examined the case and, taking into account the Court’s indications, once again invalidated the famous chessboard pattern. As one might expect, the EUIPO’s decision was appealed again by LV.

However, in its judgment of 19 October 2022, the General Court finally dismissed the action brought by Louis Vuitton Malletier (case T 275/21), finding that the EUIPO’s decision to invalidate the checkerboard trademark was correct. The judgment is interesting in that it mainly concerns the issue of proving so-called secondary distinctiveness. The Court found that it had not been demonstrated to the requisite legal standard that the contested trademark had acquired distinctive character through use in Estonia, Lithuania, Latvia, Slovakia, Slovenia or Bulgaria, which is sufficient to invalidate the EU trademark. In the case of a trademark that is devoid of distinctive character in all Member States, such a trademark may only be registered if it is demonstrated that it has acquired distinctive character through use throughout the territory of the European Union.

The Court’s ruling shows how difficult it can be to demonstrate the distinctive character of an EU trademark as a result of use, even by such a world-famous entity. It should be remembered that the judgment is not final. Louis Vuitton Malletier may still appeal to the Court of Justice (CJEU). Although it seems unlikely that the Court’s ruling will be set aside, the history of the previous case reminds us that the chessboard trademark, considered by the Court to be devoid of distinctive character, may nevertheless remain in force. If such a situation were to arise again, it seems that the purpose of the regulation on devoid of distinctive character signs would become illusory. This regulation is based on the general interest, according to which descriptive and devoid of distinctive character concepts should not be registered as trademarks, so that all competing entities can use them freely. Any withdrawal of the application for invalidation at the stage of potential proceedings before the Court will of course be tantamount to discontinuing the proceedings. This would lead to a situation where both chessboard marks are maintained in force, and thus the fashion tycoon enjoys exclusivity. In such a variant, the decisions of the EUIPO and the judgments of the Court issued in the cases will not be enforced, but they may serve as a clear direction for proceedings in similar cases.