THE IMPORTANCE OF DISTINCTIVENESS IN A TRADE MARK
The case of LOUIS VUITTON in the European General Court
The essential function of a trade mark is to guarantee the identity of origin of the marked goods or services to the consumer by enabling them, without any likelihood of confusion, to distinguish the goods or services from others which have another origin.
That said, trade mark distinctiveness is a vital concept in trade mark law in all jurisdictions. For a mark to perform the function of a trade mark and allow its owner to obtain statutory rights in and to such mark, the mark must consist of or contain a distinctive character.
The bar for trade mark distinctiveness in the EU has recently been significantly raised. On 19 October 2022, the European General Court held that the, what you would think is well-known internationally, below LOUIS VUITTON canvas design lacked inherent distinctive character and that the evidence of use submitted in support of Louis Vuitton’s argument that the design had acquired distinctiveness through use in Bulgaria, Latvia, Lithuania, Slovakia and Slovenia, was insufficient.
The burden of proof for establishing distinctive character in a trade mark through use lies with the proprietor of the trade mark, and the court held that the said proprietor must “adduce specific and substantiated evidence for that purpose.” The decision of the European General Court is a reminder that proving acquired distinctiveness through use of nontraditional marks (such as Louis Vuitton’s pattern shown above) is a difficult task, particularly for the more recently registered EU trade marks claiming protection in numerous Member States.
For guidance on trade mark distinctiveness locally and internationally, please contact our Trade Mark Department.