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Thursday, 19 June 2014

The Cat's Pyjamas: Louis Vuitton claws back much of its 3D lock trade mark

Going through his file of items to blog which have fallen behind in his priority list, this Kat has just rediscovered another decision that troubled him when he first spotted it -- not because it was wrong [for a change, mumbles Merpel], but rather because the process of reaching the correct outcome was so long and tortuous, spanning over  decade, in respect of a trade mark which this Kat doubts was worth effort given the unlikelihood that it will be used other than in conjunction with far more powerful marks that already exist comfortably on the register. The case is Case C-97/12 P Louis Vuitton Malletier v Office for Harmonisation in the Internal Market (Trade Marks and Designs), Friis Group International ApS intervening, a ruling of the Eighth Chamber of the Court of Justice of the European Union (CJEU) of 15 May. This is what it's all about.

In March 2004 Louis Vuitton applied to register the figurative sign on the right as a three-dimensional Community trade mark (CTM) for a large range of goods in Classes 9, 14, 18 and 25 [the complete list of goods can be found at the bottom of this blogpost. Readers are invited to peruse it at their leisure and decide for themselves whether the mark is either descriptive or devoid of distinctive character for them].  The mark was registered in July 2005 and everything seemed bright and sunny.  A cloud however appeared on the horizon in February 2007, when Friis applied for a declaration that the registration was invalid. While the mark emerged unscathed from a preliminary skirmish before the Cancellation Division, it got a battering in February 2010 when the First Board of Appeal upheld Friis's application for a declaration of invalidity and declared the mark invalid for all of the goods in Classes 9, 14 and 18. Said the Board of Appeal, the mark was devoid of any distinctive character in relation to all those goods and Louis Vuitton had not furnished any proof that the mark had acquired distinctiveness in consequence of the use made of it.  Class 25 was a different matter:  Since the Class 25 goods covered by the mark formed no part of Friis's appeal, the Cancellation Division’s decision to reject the application for a declaration of invalidity became final with respect to those goods.

Cat's pyjamas: a new
product line for LV?*
A lesser enterprise than Louis Vuitton might have heaved a sigh of relief and concentrated its energies in the manufacture of lock-bearing underwear, socks and pyjamas. However, the luxury brand owner decided to fight on.  In May 2010 Louis Vuitton brought an action for annulment of the Board of Appeal's decision, with some success.  The General Court agreed with Friis that, as regards all the Class 9 goods and most of the goods in Classes 14 and 18, the Board of Appeal had got it right: a locking device could indeed form an integral part of those goods. But all was not lost. Said the General Court, as regards ‘nutcrackers in precious metals, their alloys or coated therewith, candlesticks in precious metals, their alloys or coated therewith’ in Class 14 and ‘leather and imitations of leather’ in Class 18, a locking device did not seem likely to form an integral part of such goods at all. Also, regarding the following goods -- ‘jewellery, including rings, keyrings, buckles and earrings, cuff links, bracelets, trinkets, brooches, necklaces, ties pins, ornaments, medallions; horological and chronometric instruments and apparatus, including watches, watchcases, alarm clocks’ in Class 14  -- even if they did have locks, such locks would not be the sort of lock portrayed in the representation of the trade mark. In respect of these goods too the General Court annulled the Board of Appeal's decision.

The General Court was quite kind to the Board of Appeal. The Board, it said, had correctly observed that consumers are used to perceiving locking devices as being either functional or ornamental, or even as both, but not as indications of the commercial origin of the goods covered by the mark. While Louis Vuitton pressed the point that fashion houses have a trade practice of personalising functional items such as buckles or buttons so as to make them instantly recognisable, it did not show that the public would regard their shape alone as an indication of commercial origin. More to the point, the mark could not be registered in respect of goods that had  a locking device unless the mark could be regarded as departing significantly from the norm or customs of the sector that it fulfilled its essential function of indicating origin.

Louis Vuitton, having twice pushed back the Cancellation Division's initial decision, pressed on with a further appeal to the CJEU. Friis requested the dismissal of the appeal and OHIM cross-appealed on two grounds: (i) failure to state reasons in relation to the ‘nutcrackers in precious metals, their alloys or coated therewith, candlesticks in precious metals’ and ‘leather and imitations of leather’ and (ii) contradictory reasoning as regards the other goods in respect of which the Board of Appeal's decision was annulled.

The CJEU dismissed both the appeal and the cross-appeal, raising just one point that seems to this Kat worth noting. Rejecting Louis Vuitton’s submissions, the CJEU held that the General Court correctly held that a figurative mark which is constituted by part of the shape of the product which it designates is not independent of the appearance of the product it designates in so far as the relevant public perceives it, immediately and without particular thought, as a representation of a particularly interesting or attractive detail of the product in question rather than as an indication of its commercial origin.

Says this Kat, the issue of how far a product's shape, in whole or part, is an indication of origin that is somehow separable in the consumer's mind from the product itself is one of those horrible recurring questions that can never quite be satisfactorily answered.  The consumer can look at even a silhouette of a Coca-Cola bottle and say "that's a bottle of Coke" because the product shape and the trade mark are effectively inseparable; he can then look at a modernistic set of speakers and say "that's made by Bang & Olufsen" because the style suggests an indication of origin even where there is no trade mark registration and where he has not seen the speakers in question before; he can then look at a garment which has an original and distinctive locking device, or distinctive buttons, which are intended to serve a trade mark function but his information concerning its commercial origin comes from many other visual and aural cues before he even sees the lock or buttons (for example labels, swing-tags, clothes hangers and in many cases the name of the shop that sells its own products).  Consumers know what serves them as a trade mark and what doesn't, but the law on this point is difficult to articulate with clarity and even more difficult to apply.

Lock-bearing underwear here [not, it is believed, a regular Louis Vuitton product line]
Cat's pyjamas or pajamas? Here and here
Goods for which the lock image was registered
  • 'Optical apparatus and instruments, including spectacles, sunglasses and spectacle cases’ (Class 9);
  • ‘Jewellery, including rings, keyrings, buckles and earrings, cuff links, bracelets, trinkets, brooches, necklaces, [tie] pins, ornaments, medallions; horological and chronometric instruments and apparatus, including watches, watchcases, alarm clocks; nutcrackers in precious metals, their alloys or coated therewith, candlesticks in precious metals, their alloys or coated therewith, jewel boxes in precious metals, their alloys or coated therewith’ (Class 14);
  • ‘Leather and imitations of leather; travel bags, travelling sets (leather goods), trunks and travelling bags, garment bags for travel, vanity cases, rucksacks, shoulder bags, handbags, attaché cases, document cases and briefcases of leather, pouches, wallets, purses, key cases, card cases; umbrellas’ (Class 18) and
  • ‘Clothing and underwear, including sweaters, shirts, T-shirts, lingerie, belts (clothing), headscarves, neckties, shawls, waistcoats, skirts, waterproof clothing, overcoats, braces, trousers, jeans, pullovers, dresses, jackets, scarves, gloves, tights, socks, swimsuits, bathrobes, pyjamas, nightgowns, shorts, pouches (clothing); shoes, boots, slippers; headgear’ (Class 25). 
* Illustration by Wallace Edwards, some of whose beautiful and rather clever work you can find here

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