While (registered) designs are only protected for a limited time the possibility to obtain trademark protection for a design is attractive. According to (harmonized) European Trademark Law it is sufficient that a design to be registered as a trademark can be represented in a manner which enables the competent authorities and the public to determine the clear and precise subject matter of the protection of the design. However, as the case law of the Court of Justice of the European Union indicates it is sometimes difficult for a design to be accepted as a trademark. This is due to the different subject matter which is protected. While design protection grants a right in the visual appearance of a new design, trademark protection is only given if a design is capable to indicate the commercial origin of the product incorporating the design. In most cases in which trademark protection for a design is applied for, grant is refused basically with the argument that the design only has an aesthetic function. Such argument may be overcome if the Applicant can provide evidence that the design to be protected as a trademark has acquired distinctiveness through use on the market.
In a most recent decision (see here), the General Court (GC) of the European Union has outlined the requirements to be fulfilled by a design in order to be registered on the basis of acquired distinctiveness as far as the geographical extent is concerned. Due to the unitary character of a Union trademark proof of acquired distinctiveness has to be established for the entire territory of the EU.
In the case decided, Louis Vuitton’s design
was registered as a Union Trademark on the basis of acquired distinctiveness. As the EUIPO had questioned inherent distinctiveness of the design, Louis Vuitton had submitted in application proceedings evidence that it had acquired the same due to longstanding and widespread use.
The registration was attacked by a declaration of invalidity as provided by Article 59 (1) (a) and Article 7 (1) (b), (c) und (e) of Regulation 2017/1100 EUTMR. The Cancellation Division of the EUIPO first examined whether at this time the attacked trademark registration lacked the necessary distinctiveness. As in invalidity proceedings a Union Trademark enjoys presumption of validity, the person who files an application for declaration of invalidity has to produce evidence that would call into question the validity of the registered trademark. In consequence, the EUIPO has to limit its examination to those arguments submitted by the parties. As the EUIPO, however, examined the registrability of the designed per se, the GC had to examine the Board of Appeal’s decision also in this respect. The Board had relied on the contested decision on alleged “well-known facts” to supplement the arguments presented by the Applicant for declaration of invalidity. In that regard, the GC pointed out that the Board was not prevented from relying on well-known facts observed by the EUIPO in the context of the validity proceedings. Consequently, such finding was not contrary to the rules on the burden of proof for EUIPO taking them into account. The Cancellation Division of the EUIPO declared the invalidity of the design, the GC reversed this decision and confirmed its validity.
According to findings of the EUIPO confirmed by the GC the pattern being registered as a trademark was basic and common place pattern that did not depart significantly from all norms and customs of the sectors concerned and thus lacking distinctiveness. For this reason, the Cancellation Division had to consider Louis Vuitton’s proof submitted. In a preceding decision the EUIPO emphasized that acquired distinctiveness must be proven for all of the Member States of the European Union where the mark was ab initio devoid of distinctive character due to the unitary depiction of a EU trademark.
The EUIPO considered in invalidation proceedings evidence with relation to that group of Member States only, coming to the conclusion that on the basis of that evidence it had not been shown the necessary acquired distinctive character.
With reference to proceedings decisions of the CJEU, the GC recalled that due to the unitary character of the Union Trademarks proof of acquired distinctiveness could be produced globally for all the Member States concerned or separately for different Member States or groups of Member States which, however, allow conclusions as to the acquired distinctiveness for the entire Union or if distinctiveness is not given with regard to certain Member States, in relation to those.
This decision has further clarified what is required to prove acquired distinctiveness, in particular, whether it is sufficient to submit proof for certain countries or for certain Member States which, however, allow conclusions as to the acquired distinctiveness for the those Member States with regard to which no evidence has been filed.
Due to the revision of the Union Trademark Law it is now provided that a trademark registered upon the aspect of acquired distinctiveness may nevertheless remain on the register if in the meantime, that is to say after its registration, has acquired distinctive character for the goods and/or services for which it had been registered. Since the Trademark Regulation does not provide provision which requires that the acquisition of distinctive character through use be established by separate evidence in each individual Member State, the EUIPO was required to carry out a global assessment of all the relevant evidence submitted by the applicant whether they referred to the European Union as a whole or a group of Member States. If in invalidation proceedings the deciding body comes to the conclusion that the evidence limited to a certain Member States was regarded as sufficient to proof acquired distinctiveness whereas in invalidation proceedings the EUIPO comes to the conclusion that at the time of the application that material was not sufficient, the EUIPO would be obliged to also consider any and every piece of evidence submitted so far.
Dr. jur. Gert Würtenberger – Lawyer at Würtenberger RA