Luxury retailer Louis Vuitton has lost a trademark case following the EU General Court's cancellation of two Community trademarks registered by the company. Following a challenge by German retailer Nanu-Nana, both registrations were found to be invalid.The first registration covered a dark brown and beige pattern and was granted registration in 1998 whilst the second registration covered the same pattern but in black and grey and was registered in 2008. Both marks were registered for leather products and bags.

Double-blow

Commenting on the EU General Court ruling, Sharon Daboul, trademark attorney at EIP, said: 'This trademark loss is a double-blow to Louis Vuitton, who has been fighting to protect these marks since 2009.  It can no longer claim to have a monopoly on the chequerboard pattern as applied to leather goods and bags, even if it was the first to come up with it. This loss might make it harder for the company to protect its bags against competitors or counterfeiters in the EU as it will no longer be able to rely on its trademark registrations.' She added that it was a warning to brand owners that trademark registrations were not safe from challenge.  'An essential function of a trademark is to serve as a badge of trade origin. Trademarks must have distinctive character and a trademark loses its ability to be distinctive if it becomes commonplace in the trade; this can be as a result of the acts, or inactivity of the brand owner. If a trademark is allowed to become commonplace such that it can no longer distinguish a product from competitors, its value is lost and a pro-active third party can apply to cancel it.'

Basic and banal

In the two decisions dated 21 April 2015, the General Court held that the registrations were basic and banal, and lacked distinctive character. It found that the chequerboard pattern of which the marks consisted, was a basic and commonplace figurative pattern, and that it did not differ from the norm or customs of the sector for leather goods and bags. The Court said that the public would perceive it as a commonplace and everyday pattern, and not as an indicator of trade origin. Louis Vuitton had argued that the pattern was complex, particular and original and these arguments were dismissed by the Court. As the refusal applied across the entire EU, Louis Vuitton had to prove that consumers in every member state would relate the chequerboard marks back to Louis Vuitton but was unsuccessful in doing so.