## Facts

- Louis Vuitton Malletier (LV) obtained an international registration designating the European Union for a figurative mark consisting of a chequerboard design, used for goods including leather and imitation-leather bags, suitcases, and related consumer products.
- The design at issue combined alternating blue and beige squares and included a weft-and-warp style pattern within the squares.
- Norbert Wisniewski filed an application at the European Union Intellectual Property Office (EUIPO) seeking a declaration of invalidity, arguing the chequerboard motif was a common decorative design that consumers would not treat as a trade mark.
- LV argued that the specific color combination and stylization made the sign distinctive from the outset, and, alternatively, that it had become distinctive through use across the European Union.
- To support distinctiveness through use, LV submitted a substantial record (including 68 exhibits) such as sales and marketing materials and survey-type evidence aimed at showing that EU consumers associated the pattern with LV.
- EUIPO’s Cancellation Division declared the mark invalid on absolute grounds for lack of distinctive character.
- The EUIPO Second Board of Appeal (decision of 22 November 2018, Case R 274/2017‑2) upheld invalidity, reasoning that chequerboard patterns (including stylized versions) were common in the relevant sectors and that LV had not proved distinctive character acquired through use; in doing so, the Board assessed only part of LV’s evidentiary file.
- LV brought an action before the General Court seeking annulment of the Board of Appeal’s decision.

## Issues

1. Whether EUIPO’s Second Board of Appeal adequately justified its conclusion that the specific chequerboard sign would be perceived as a decorative motif rather than as an indicator of commercial origin for the goods concerned.
2. Whether the Board of Appeal lawfully rejected distinctive character acquired through use, given its obligation to make an overall assessment of the evidence covering the European Union.

## Decision

- The General Court annulled the decision of the EUIPO Second Board of Appeal of 22 November 2018 (Case R 274/2017‑2).
- The Court found that the Board’s reasoning was defective, including reliance on generalized assertions about chequerboard motifs and an insufficient examination of the specific sign as registered.
- The Court held that the Board committed error by failing to examine the evidence of distinctive character acquired through use as a whole, instead reviewing only a portion of the record submitted by LV.
- The Court did not finally rule that LV had proved acquired distinctiveness; it held that EUIPO’s contrary conclusion could not stand because the required assessment and statement of reasons were incomplete.
- EUIPO was ordered to bear the costs.

## Legal Principles

- Pattern marks are assessed under the same legal criteria as other marks, but consumers often view repeating patterns as decoration, especially in fashion and leather goods; a pattern will more readily function as a mark only if it differs significantly from sector norms.
- When an authority relies on “well-known facts” about market practices or consumer perception, those facts must be the kind that are generally known or verifiable from accessible sources, and the authority must still give a clear explanation tying those facts to the sign and goods at issue.
- Distinctive character acquired through use must be assessed by considering all relevant factors and all submitted evidence together; an authority may not dismiss the claim after addressing only part of the file.
- Where the sign lacks distinctive character across the European Union, proof of acquired distinctiveness must cover the EU territory; however, proof may be produced through evidence that spans multiple Member States, so long as it supports the required territorial showing.
- In invalidity proceedings, EUIPO must state reasons that allow the parties and the reviewing court to understand why the evidence was accepted or rejected and how the legal test was applied.

## Conclusion

The General Court set aside EUIPO’s invalidity decision concerning LV’s chequerboard figurative mark because the Board of Appeal relied too heavily on generalized claims about decorative patterns and failed to carry out a complete, EU-wide evaluation of LV’s evidence that the mark had become distinctive through use.


Louis Vuitton Malletier v. European Union Intellectual Property Office, T-105/19 (2020)