Three-dimensional shape marks are notoriously hard to protect as CTMs. Cleverly filing in 2-D instead, though, may not sidestep the problems, as Louis Vuitton learned recently when the ECJ ruled on the validity of its CTM for a 2-D mark representing a buckle shape (Louis Vuitton Malletier v OHIM, Case T-237/10). The decision throws into bold relief the traps that exist for the unwary in protecting not just shape marks, but also marks likely to encounter distinctiveness objections generally.
Louis Vuitton ("LV") had in fact already registered its mark, a CTM for a two dimensional figurative mark representing the shape of a buckle or fastener:
The mark was protected for a wide range of goods in Classes 9, 14, 18 and 25.
LV did not enjoy the spoils of its registration for long, however. Before the mark had been registered for two years, a competitor in the fashion business, Friis Group International ApS, applied to invalidate the registration on grounds of non-distinctiveness. It argued that fasteners of the type represented were common for the claimed goods and that LV’s mark did not differ substantially from the norms of the trade.
At first instance Friis failed, but it appealed in relation to the findings in Classes 9, 14 and 18. The Board of Appeal lent a more sympathetic ear, finding LV’s mark non-distinctive and holding that LV had failed to prove that the mark had acquired distinctive character throughout the EU either before registration or since.
Not ready to relinquish its rights so easily, LV appealed to the General Court.
On the substantive issues, the General Court sided with Friis and the Board of Appeal.
Although the mark applied for was essentially merely a representation of a locking device rather than the shape of a three-dimensional locking device, the Court treated the application much the same as if it had been for the shape. The Court accepted the Board of Appeal’s finding that locking devices could form part of some of the goods in respect of which the mark had been registered, and that in respect of those goods the mark might be perceived as essentially, or at least partially, functional, and not as an indicator of origin.
In order to assess the Board’s findings in this regard, the Court examined the question of distinctiveness from the point of view of the goods as claimed by LV. This methodical approach benefited LV; in particular, it allowed the Court to overturn the invalidation in relation to specific goods for which fastening devices of the kind represented were not common, such as nutcrackers, jewellery, watches, leather, imitations of leather, and umbrellas. The Court’s approach meant that LV gained slightly from the appeal.
The flip side of this approach, however, was that the Court took LV’s specifications on their own terms. LV, in line with common practice, had claimed protection for some specific goods, but also for many broad categories of goods. In Class 9 in particular, it claimed protection for "optical apparatus and instruments, including spectacles, sunglasses and spectacle cases." The General Court noted that locks of the type represented could form part of spectacle cases, but that since the claim to protection was for "optical apparatus and instruments" generally, of which "spectacle cases" were only one part, the mark must be found to be devoid of distinctiveness for all the goods claimed in Class 9. Hence, LV’s wings were clipped in this Class in a way which it was probably not expecting.
A catalogue filed in evidence by Friis which showed that fasteners made up of similar basic geometrical shapes to those appearing in LV’s mark helped persuade the Court that the Board had been right to determine that the mark did not differ substantially from the norms of the relevant market sector, and that it was devoid of distinctiveness.
LV still had a chance to argue that its buckle mark had acquired distinctiveness either before registration or at some point since. In this, however, its plea fell short. The fashion house had filed proof of acquired distinctiveness before OHIM, but the Board of Appeal had ruled that no such proof had been filed for all member states of the EU existing as of the relevant date. In particular, evidence in this case was lacking for Austria, Belgium, the Czech Republic, France, Germany, Greece, Italy, Spain, Sweden, the United Kingdom, Denmark, Ireland, the Netherlands, Portugal, Hungary, Luxembourg and Cyprus.
LV gamely argued that the requirement to prove acquired distinctiveness across the whole of the EU should apply to word marks only, in order to avoid the grant of monopolies in marks that are descriptive in the languages of one or more member states. Figurative and three-dimensional marks, on the contrary, are not likely to be perceived in different ways in different countries, and therefore ought to be regarded as registrable if they are shown to have acquired distinctiveness in a substantial part of the EU. Since a single member state had been regarded as "a substantial part of the European Union" for the purposes of claims to reputation (PAGO International, Case C-301/07), LV argued that proof of acquired distinctiveness in a single member state should also be sufficient for threedimensional and figurative marks. Indeed, LV argued that the unitary nature of the CTM system required this approach.
The General Court, however, disagreed. It could see no reason why the case law that had developed in relation to acquired distinctiveness for word marks should not apply equally to other types of marks that had been regarded as non-distinctive, including three-dimensional and figurative marks. Moreover, in its view the unitary nature of the CTM system required that distinctiveness be assessed for each and every member state. It observed that it would be "paradoxical" if a member state could on the one hand refuse a national application for a mark on grounds of lack of distinctiveness, but would have to respect and enforce a CTM registration for the same mark granted on the basis that distinctiveness in "a substantial part of the EU" had been shown. Given that LV had not filed proof of acquired distinctiveness at the time of filing for all 15 states that had been members of the EU at that date, nor proof of distinctiveness acquired after registration for the 25 member states now admitted, the Court affirmed the Board’s finding that LV’s registration must be invalidated, except in relation to the limited goods for which the mark had been found to be inherently distinctive.
By filing for a figurative mark rather than the three-dimensional shape, LV neatly sidestepped the risk of an objection under Article 7 (1) (e) CTMR that the shape was exclusively technical or arose from the nature of the goods, an objection that it would not have been able to overcome through evidence of acquired distinctiveness.
When the registration was eventually challenged, however, it became clear that the card tucked up LV’s sleeve thereby was of limited value, since its proof of acquired distinctiveness fell decisively short. It is useful to have it confirmed that the same stipulations on geographical extent of acquired distinctiveness apply to figurative and 3-D marks as to word marks, but having that answer is cold comfort given the serious difficulty and high costs associated with trying to prove acquired distinctiveness across the whole of the EU.
It is hard not to have some sympathy with LV’s arguments on the point, since figurative and 3-D marks are not as clearly seen differently in different parts of the EU as word marks. For many the unitary nature of the CTM system tends to support the grant of rights to parties who can show that inherently non-distinctive marks have become distinctive through use in a substantial part of the EU. Whether there is a case for treating figurative and 3-D marks differently on this score is perhaps something that the ECJ itself should examine, although the ongoing review of the CTMR may mean that the Commission gets there first. Either way, given the importance of non-word marks, the issue is one that is unlikely to go away. It is arguable whether the Court’s finding on LV’s Class 9 specification was right given that the general category of "optical apparatus and instruments" had been expressly stated as "including" certain identified goods such as "spectacle cases."
The Court’s refusal simply to carve out "spectacle cases", which were specifically mentioned, seems rather hard. Those dealing with questions of non-distinctiveness before OHIM and the courts should look at their own cases and ask whether their own specifications include broad categories which could fall prey to the same treatment. If so, restrictions, or at least submissions on the point, may well be in order, so as to stop the key from turning in the lock as it did for the unfortunate LV.