ECJ confirms that Louis Vuitton's locking device is distinctive for certain goods

In Louis Vuitton Malletier v Office for Harmonisation in the Internal Market (OHIM) (Case C-97/12P, May 15 2014), the Court of Justice of the European Union (ECJ) has maintained a decision of the General Court (Case T-237/10) in which the latter had partially annulled a decision of the First Board of Appeal of OHIM that Louis Vuitton’s two-dimensional (2D) registration of a locking device was invalid. 

In 2005 Louis Vuitton obtained a Community trademark registration for the following 2D figurative mark for a wide range of goods in Classes 9, 14, 18 and 25 of the Nice Classification:

In 2007 Friis Group International ApS applied to invalidate the registration on grounds of non-distinctiveness. The application was dismissed at first instance because the trademark was deemed to contain the minimum degree of distinctiveness necessary for registration. Friis appealed in relation to Classes 9, 14 and 18. The Board of Appeal held that the mark lacked distinctiveness and held that Louis Vuitton had failed to prove that the mark had acquired distinctiveness through use throughout the European Union.

Louis Vuitton appealed to the General Court, which assessed the application as if it were a 3D trademark, because it was a figurative mark consisting of a shape of a product. It concluded that the trademark did not depart from the norm in the sector for certain goods covered by the application which would normally contain locking devices, such as jewel boxes, bags and spectacle cases. However, it held that the trademark was distinctive for goods such as nutcrackers, candlesticks, jewellery, watches, leather, imitations of leather and umbrellas, because these goods do not normally contain locking devices and there was no conceptual link between the trademark and these goods.

Louis Vuitton appealed to the ECJ, claiming that the General Court had:

• mistakenly invoked case law relating to 3D marks;
• infringed the rules regarding Friis burden of proof; and
• distorted the clear meaning of the evidence.

OHIM cross-appealed, arguing that the General Court had not given proper reasons why the mark was distinctive in respect of nutcrackers, candlesticks, leather and imitations of leather. It also claimed that the General Court had provided contradictory reasons why the mark was found to be distinctive for other goods.

In its appeal, Louis Vuitton argued that the ‘depart significantly from the norm’ test was not applicable and that the public’s perception had not been properly considered. Louis Vuitton’s claim that the trademark was perceived as a logo and not a lock was deemed to be inadmissible as the figurative mark was clearly a 2D representation of a product. 

It was necessary to apply case law relating to 3D marks in this case, because the figurative trademark consisted of part of a shape of a product which it designated. In addition, the ECJ held that the relevant public would view the trademark as an interesting detail of the product in question, rather than as an indicator of origin.

Further, Louis Vuitton claimed that Friis should have proved that the trademark was not inherently distinctive. It also claimed that evidence filed by Friis was incorrectly dated and that, as a result, the General Court had distorted the evidence. As Louis Vuitton had not substantiated its claim that the evidence was distorted, the claim was rejected. The ECJ held that the burden of proof lay only with Louis Vuitton to prove that the trademark either had intrinsic distinctive character or was distinctive through use. Therefore, the General Court had not infringed the rules regarding the burden of proof.

In its cross-appeal, OHIM argued that the General Court had disregarded the additional reasons set out by the Board of Appeal in support of its finding that the trademark was not distinctive. The Board of Appeal had applied case law relating to 3D marks and had not relied on other reasons to justify its decision. Therefore, no additional reasons had been disregarded by the General Court and this ground of the cross-appeal was dismissed.

OHIM concurred that, for "spectacle cases", the mark lacked distinctiveness, because they were covered under "optical apparatus and instruments". However, it claimed that the General Court should also have found that the trademark in question lacked distinctiveness in respect of "jewellery" and "horological and chronometric instruments and apparatus", because, in respect of "jewel boxes in precious metals, their alloys or coated therewith", the mark was found to lack distinctiveness.

The ECJ found that the General Court had been correct in finding that, for spectacle cases, the mark lacked distinctiveness, because the word ‘including’ in the specification indicated that "spectacles, sunglasses and spectacle cases" were specific articles falling within the category of "optical apparatus and instruments".  However, as a semi-colon distinguished "jewel boxes in precious metals, their alloys or coated therewith" from "jewellery", the mark had been correctly deemed distinctive in respect of these latter goods.

In addition, OHIM did not submit arguments which confirmed that the General Court had distorted the facts or evidence produced before it in relation to "horological and chronometric instruments and apparatus, including watches, watchcases, alarm clocks", so the claim was rejected.

In conclusion, both appeals were rejected. This case reiterates how 2D trademarks are evaluated by European courts when they are representations of the goods or of a potential component of the goods.

Triona Desmond, Squire Sanders (UK) LLP, London