Those in dull colours provide a perfect background for accessories, those in full colours are visually attractive, and those enjoying top recognition have become symbols of luxury and are registered as trademarks. However, not all textile patterns will be distinctive enough to qualify for registration.
Louis Vuitton – fashionable already in the Middle Ages
Louis Vuitton’s Union trade mark representing a brown and beige chequerboard pattern has been challenged by German company Nanu-Nana engaged mainly in sale of household goods. The German company filed for invalidation on the basis that the sign is descriptive and devoid of distinctive character and that it has become customary in the current language or in the bona fide and established practices of the trade. According to Nanu-Nana, the sign consists exclusively of the shape which gives substantial value to the goods and, moreover, Louis Vuitton acted in bad faith when filing its application.
EUIPO invalidated the mark (decision of the First Board of Appeal, 4 May 2012, case no. R 1855/2011-1, available in English here), and its decision was upheld by the General Court (case no. T-359/12, judgment of 21 April 2015). After an appeal was filed to CJEU, the invalidation application was withdrawn so the trade mark continues to be protected.
In denying registrability to this trade mark, the General Court held that: “The pattern thus does not contain any notable variation in relation to the conventional representation of chequerboards and is the same as the traditional form of such a pattern. Even applied to goods such as those falling within Class 18 [purses, trunks, travelling bags – note added], the pattern in question does not differ from the norm or customs of the sector inasmuch as such goods are generally covered with fabrics of different kinds, and the chequerboard pattern, due to its great simplicity, might constitute precisely one of those patterns.” (judgment of 21 April 2015 in case no. T-359/12).
The Court also noted that the chequerboard pattern has always existed and been used in decorative arts. It was used already in the Middle Ages in the Bayeux tapestry, which depicts William the Conqueror’s conquest of England (https://en.wikipedia.org/wiki/Bayeux_Tapestry):
Interestingly, the Court also noted that Louis Vuitton’s pattern actually consists of the appearance of the product itself (wallet, bag) so that its distinctiveness should be assessed according to the same criteria as those applicable to three-dimensional trademarks.
This means that regard must be had to the fact that an average consumer’s perception of a 3D mark may be different than their perception of an “ordinary” 2D mark. As observed by the Court, “average consumers are not in the habit of making assumptions about the origin of products on the basis of their shape or the shape of their packaging in the absence of any graphic or word element and it could therefore prove more difficult to establish distinctiveness in relation to such a three-dimensional mark than in relation to a word or figurative mark.”
According to the Court, Louis Vuitton’s pattern will be perceived by the relevant public as a representation of a particularly interesting or attractive detail of the product in question, rather than as an indication of its commercial origin. This weakens its distinctive character.
Importantly, the Court also held that the mark did not become distinctive due to use in the territory of the European Union (acquired distinctiveness). Evidence of the acquisition of distinctive character must be submitted in relation to each Member State where the contested trade mark was not distinctive (in Louis Vuitton’s case this was the entire EU). Yet, Louis Vuitton failed to demonstrate that the chequerboard pattern is associated with its company in all EU countries.
Not for a chequerboard. But what about a check pattern?
There are other textile patterns successfully registered as trademarks. Note, for example, the famous Burberry check pattern. Its distinctiveness rests on the combination of five colours (light brown, beige, white, red, and black) in a characteristic checked pattern of stripes.
Obviously, the registration of Burberry’s mark does not mean the company has monopoly over the check pattern per se. Other check patterns are also registered, for example:
Pattern mark – a new kind of trade mark
As of 1 October 2017, Union trade mark filings have to comply with Commission Implementing Regulation (EU) 2017/1431 of 18 May 2017, which defines “pattern marks” as a new category of trade marks. EUIPO has already published first pattern mark filings, of which there are currently ten. (https://euipo.europa.eu/eSearch/#advanced/trade marks/1/100/n1=MarkFeature&v1=Pattern&o1=AND&sf=ApplicationNumber&so=asc).
With respect to textile patterns, note that “in the case of a trade mark consisting exclusively of a set of elements which are repeated regularly (pattern mark), the mark shall be represented by submitting a reproduction showing the pattern of repetition. The representation may be accompanied by a description detailing how its elements are repeated regularly.”
When registering a textile pattern as a trade mark, you need to remember that registration is granted for the entire mark but not for its particular parts. If any of the parts is of itself distinctive enough to be registrable on a stand-alone basis, you will want to file that part as a trade mark, too. For an interesting interplay between the registration of a pattern and of its parts, see another mark by Louis Vuitton, called Monogram Canvas:
Check what we refer to:
- The Industrial Property Law Act of 30 June 2000 (as consolidated in Journal of Laws of 2017, item 776);
- Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ L 154, p.1);
- Commission Implementing Regulation (EU) 2017/1431 of 18 May 2017 (OJ L 205, 2017, p. 1) – link;
- Judgment of the General Court (Second Chamber) of 21 April 2015, T-359/12;
- Decision of the First Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) of 4 May 2012, R 1855/2011-1.