April 27th, 2015

Louis Vuitton’s trade mark chequerboard patterns ruled invalid

The European General Court dealt a double blow to Louis Vuitton last week, ruling invalid two figurative Community trade marks protecting the luxury brand’s classic chequerboard patterns (T-359/12 and T-360/12). The court found a lack of distinctive character (contrary to Article 7(1)(b) of the CTM Regulation (207/2009/EC)) and failure to acquire distinctive character through use (Article 7(3)).

Known to Fashionistas as the ‘Damier’, LV first introduced the signature print on its canvas trunks in 1888. The brown and beige chequerboard pattern, in a weft and warp structure, was registered as a trade mark in respect of leather goods (Class 18) in 1996, and a light and dark grey version in 2008. These patterns still serve as the foundation for many iconic Louis Vuitton leather goods and accessories (for example, the Speedy and the men’s Keepall).

Beige

As reported in IPKat, German retailer Nanu-Nana opposed both CTMs in 2009, claiming that they had failed to acquire a distinctive character across all EU member states. OHIM’s cancellation division and its Board of Appeal both ruled in favour of the applicant in 2011 and 2012, and their reasoning was upheld by the General Court.

Lack of distinctive character

The parties did not dispute that the goods covered by the contested mark are for everyday use, so that the relevant public would be the average consumer in the EU. The Court affirmed the Board of Appeal’s observation that ‘it is not apparent from the description of the goods in question that they are luxury goods’ or ‘so sophisticated or expensive that the relevant public would be likely to be particularly attentive with regard to them’.

The Court confirmed that a key factor was that the marks coincided with the appearance of the products, as the pattern covered some or all of the product’s surface. It was found that consumers would find it difficult to perceive those signs as identifiers of commercial origin if they do not bear any graphic or word elements, unless they departed significantly from the sector’s norms and customs. The presentation of a chequerboard in alternating colours and the impression of interlacing threads was deemed not to “contain any notable variation in relation to the conventional presentation of such goods” and therefore the public would perceive it as a “commonplace and everyday” pattern.

GraphiteFurther, the Court added, “the juxtaposition of two elements that are not in themselves distinctive cannot alter the perception of the relevant public as to the absence of distinctive character, ab initio, of the contested mark”.

Failure to acquire distinctive character through use

The Court rejected LV’s argument that the Board had wrongly assessed whether the CTMs had acquired distinctive character from the date of registration, rather than the date of opposition.

The Court further found that LV had failed to submit sufficient evidence of use to demonstrate that the marks had acquired distinctiveness in each of the then 15 EU member states from the date of registration (contrary to LV’s argument that evidence need only be produced for a ‘substantial part’ of the EU). It was therefore held that there was an absolute ground for refusal and the marks were declared null and void.

 Next steps for LV?

Like many other high-end fashion houses, LV has increasingly introduced products without the LV logo. This shift coincides with a wider shift in consumer attitudes from prominent logos to more discreet, subtle and less accessible luxury, “a change to ‘in the know’ rather than ‘in the show’”. Fashionista will be interested to see what effect (if any) the General Court’s judgments will have on LV’s future brand protection strategies and position as the world’s most valuable luxury brand, a title it has held for nine years.

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April 9th, 2015

Is Versace a Copycat?

Rumour has it that Versace is soon to be at the wrong end of a legal dispute following allegations that they have copied the t-shirt designs of British born, Los Angeles based, artist, Kesh. Kesh teamed up with American Apparel back in 2013 to design the ‘Face Le New’ t-shirt (as displayed on the left […]

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Fashionista was interested to read about the ‘unusual’ decision handed down by the Court of Appeal last week in the matter of Roger Maier and Assos of Switzerland SA v ASOS plc and ASOS.com Limited at [2015] EWCA Civ 220. Despite finding likelihood of confusion and damage to distinctive character, a 2-1 majority accepted ASOS’s […]

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France’s recent decision, to potentially ban the use of fashion models with a BMI of 18 or less, has reignited the debate about fashion houses’ use of underweight models. France could soon join Italy and Spain which adopted rules, and Israel which introduced legislation, against too thin models on the catwalks or in advertising campaigns. […]

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Today the UK Competition and Markets Authority (“CMA”) announced that it has opened a new investigation into “suspected anti-competitive arrangements in the UK clothing, footwear and fashion sector”. Fashionista asked her colleague and competition law expert Dervla Broderick what this is likely to involve. Dervla explained that the investigation is being carried out under Chapter I […]

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March 19th, 2015

Fashionista at (Tax) Law

Fashionista was somewhat underwhelmed by yesterday’s Budget. Generous new reliefs for “creative industries” such as TV, film, theatre and even orchestras http://blogs.olswang.com/budgetblog/2015/03/19/further-boost-for-creative-industries/ but what about our highly creative fashion industry? Perhaps George should consult Mrs rather than Mr Cameron before planning his next Budget, if he’s still Chancellor after the election. To be fair there […]

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Fashionista recently attended the FashTech “Silicon to Silk” event about the latest developments in wearable technology. The insightful panel was made up of Nancy Tilbury (Co-Founder and Creative Director at Studio XO, an innovative and well known wearable technology player), Matthew Drinkwater (Head of the Fashion Innovation Agency at the Centre for Fashion Enterprise) and […]

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March 5th, 2015

Denim Wars: G-Star vs. Voi

As reported in Drapers, G-Star recently stopped rival denim brand Voi from selling a copycat style jean. Design right cases are few and far between in the English High Court, particularly when those rights are unregistered, so Fashionista was interested to read the judgment. G-Star is one of Europe’s leading denim brands and the case […]

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March 3rd, 2015

London Fashion Week 2015

Fashionista was lucky enough to attend the Holly Fulton Autumn/Winter 2015 at London Fashion Week. Fulton put on a very luxurious and feminine show with a spectrum of regal purples, rich reds and emerald greens. The fabrics equally matched the expensive tones, as Fulton used bejewelled tops, lingerie cut dresses and fur accents. Fulton’s inspiration […]

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As reported by Drapers last week, retailers should beware of HMRC who is taking action when they identify those who are failing to pay the national minimum wage. MatchesFashion.com was the latest fashion retailer to be ‘named and shamed’ by the Government, along with 69 other employers, for failing to pay two of its workers the National Minimum […]

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