Case T-105/19, Louis Vuitton Malletier v EUIPO – Wisniewski

In June 2015, Norbert Wisniewski filed a declaration of invalidity against LV's international registration shown below, covering the EU for goods in class 18, such as handbags and wallets ("the mark").

In December 2016, the EUIPO upheld the declaration of invalidity in respect of all goods. The mark was considered inherently devoid of distinctive character in the whole of the EU and that it had not acquired a distinctive character for the covered goods. The BoA dismissed the appeal filed by LV, confirming the earlier invalidity decision.

General Court

LV appealed the BoA decision alleging (1) an incorrect assessment of the inherent distinctive character of its mark (which was dismissed), and (2) an error in the assessment of the distinctive character acquired through use (which was upheld). The GC ruled as follows on these allegations:

• No incorrect assessment by the BoA as to lack of inherent distinctive character

When assessing the inherent distinctiveness of the mark, the BoA relied on the principles applied to 3D marks, as it is a pattern intended to be placed on part of the goods in cl. 18 or to cover their surface area, corresponding then to the outward appearance of the goods (this was not disputed by the parties).

The BoA did not carry out a fresh assessment of its own motion but rather assessed if the mark was basic and commonplace in light of the arguments/evidence filed by Wisniewski and found it to be substantiated by well-known facts (i.e. facts likely to be known by anyone or learnt from generally accessible sources). The GC confirms that the BoA was correct in finding that the fact that the mark 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 and that this was not contrary to the rules on the burden of proof in invalidity proceedings.

• The BoA erred in the assessment of the distinctive character acquired through use of the mark:

Since the BoA concluded that the mark was devoid of inherent distinctive character throughout the EU, applicant was required to prove that it had acquired distinctive character through use in all EU countries. Extensive evidence was filed in this regard but the BoA failed to carry out an overall assessment of the material. The GC found this sufficient to have the BoA's decision annulled, as the BoA failed to comply with Articles 59(2) and 7(3) EUTMR and with judgments such as Société des produits Nestlé and Others v Mondelez UK Holdings & Services (C-84/17 P, C-85/17 P and C-95/17 P, EU:C:2018:596).

When reviewing the evidence, the BoA divided the EU Member States into 3 Groups: (1) countries in respect of which, e.g. opinion polls were filed to show that the mark acquired distinctive character through use, (2) some other countries in respect of which the same conclusion could be drawn due to extrapolation of said polls and (3) countries which had no LV brick-and-mortar establishments, those included Bulgaria, Estonia, Latvia, Lithuania, Malta, Slovenia and Slovakia.

The BoA held that the mark had not acquired distinctive character through use, as none of the evidence, on its own or jointly, was capable of demonstrating that a significant part of the relevant public, in the countries of group 3, identified the goods as originating from a particular undertaking, and that there was no need to examine the countries in groups 1 and 2. That said, the BoA did not take into account evidence potentially relevant for assessing whether the mark had acquired distinctive character through use, including in EU countries of group 3. By way of illustration:

• BoA only assessed some pieces of evidence specifically referring to the countries in group 3, without explaining why the others were irrelevant.
   
• BoA merely estimated, in isolation, the evidence explicitly mentioning Member States in group 3 without taking into account other evidence that may also affect such country (e.g. when examining the evidence for Estonia, it only made express reference to that country and did not assess this together with the evidence relating to the EU as a whole or to a region which may also be relevant to Estonia (Eastern Europe)).
   
• BoA wrongly dismissed some evidence (e.g. material of counterfeit goods as they not only showed the mark but also a complete imitation of the goods) and, once again, this material should have been evaluated together with the remaining evidence filed.
   
• The BoA's reason of assembling the Member States in group 3 was the fact that there was no physical shop in these countries. However, the GC confirms that nowadays, this does not necessarily prevent the relevant public in those countries from becoming familiar with and recognising the mark by other means (e.g. online presence generally accessible in the EU, electronic catalogues/brochures, online advertising by globally/locally known celebrities/influencers, or in shops in the most central and popular tourist areas of major cities and airports). However, the BoA disregarded some evidence of use on the Internet (e.g. popular sites such as Google, Instagram) and limited itself to criticising some further pieces of evidence, examined alone and without regard to the other material that may have served to further corroborate the image gained by the mark on generally accessible websites.

Next steps:

This Judgment further helps to understand the teachings from the CJEU ruling in KitKat II setting out the means of proving acquired distinctiveness in the whole EU and the type of evidence needed to show such acquired distinctiveness which may be different for each member state. The judgment must be welcomed for two reasons:

Firstly, the GC confirms that the lack of (extensive) evidence for some EU countries (e.g. Estonia) may be counterbalanced by material involving the EU as a whole and in particular regions containing such EU country (e.g. Eastern EU countries) as well as  by filing evidence in relation to cross-border markets (justified by their geographical, cultural or linguistic proximity). Moreover, evidence relating to the whole EU which could  impact on some EU member states may need to considered, in particular international advertising campaigns in well-known fashion magazines.

Secondly, the judgement also indicates that it is not necessary to have physical stores in all EU member states to show acquired distinctiveness if consumers could have become aware of the mark by other means, in particular via the Internet, social media, including sites of celebrities and influencers, or in shops in the most central and most popular tourist areas of major cities and airports in the EU.

Authored by Paula Moreno