Louis Vuitton Malletier v EUIPO - Wisniewski (Representation d'un motif a damier II) (EU trade mark - Judgment) [2022] EUECJ T-275/21 (19 October 2022)

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(EU trade mark – Invalidity proceedings – International registration designating the European Union – Figurative mark representing a chequerboard pattern – Absolute ground for invalidity – No distinctive character acquired through use – Article 7(3) and Article 51(2) of Regulation (EC) No 40/94 (now Article 7(3) and Article 59(2) of Regulation (EU) 2017/1001) – Overall assessment of the evidence of distinctive character acquired through use – Geographical scope of the evidence of distinctive character acquired through use – Evidence of use of the mark on the internet – Evidence regarding infringement proceedings)

Louis Vuitton Malletier, established in Paris (France), represented by P. Roncaglia, N. Parrotta and P.-Y. Gautier, lawyers,

European Union Intellectual Property Office (EUIPO), represented by J. Crespo Carrillo, acting as Agent,

composed, at the time of the deliberations, of A. Kornezov (Rapporteur), President, E. Buttigieg and K. Kowalik-Bańczyk, Judges,

1 By its action based on Article 263 TFEU, the applicant, Louis Vuitton Malletier, seeks the annulment and alteration of the decision of the Fifth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 25 February 2021 (Case R 1307/2020-5) (‘the contested decision’).

2 On 25 June 2015, Mr Norbert Wisniewski filed an application with EUIPO for a declaration of invalidity of the effects of international registration No 986207 designating, inter alia, the European Union, which had been obtained by the applicant from the International Bureau of the World Intellectual Property Organisation (WIPO) on 4 November 2008.

3 The mark covered by the international registration is the following figurative sign:

4 The goods covered by the contested mark, in respect of which a declaration of invalidity was sought, were in Class 18 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and corresponded to the following description: ‘Boxes of leather or imitation leather, trunks, suitcases, traveling sets (leatherware), traveling bags, luggage, garment bags for travel, hat boxes of leather, vanity cases (not fitted), toiletry bags (empty), backpacks, satchels, handbags, beach bags, shopping bags, shoulder-strap bags, carrier bags, shoulder bags, waist bags, purses, attaché cases, briefcases (leatherware), school bags, document holders, clutch bags, wallets, change purses, key cases, card cases (wallets), umbrellas, sunshades’.

5 The grounds relied on in support of the application for a declaration of invalidity were those set out in Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended (replaced by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1)), in particular Article 158(2) thereof, read in conjunction with Article 52(1)(a) and Article 7(1)(b), (c) and (e) thereof (now Article 198(2), Article 59(1)(a) and Article 7(1)(b), (c) and (e) of Regulation 2017/1001 respectively).

6 On 14 December 2016, the Cancellation Division granted the application for a declaration of invalidity on the basis of Article 52(1)(a) of Regulation No 207/2009, read in conjunction with Article 7(1)(b) thereof.

7 On 3 February 2017, the applicant filed a notice of appeal with EUIPO against the Cancellation Division’s decision.

8 By decision of 22 November 2018 in Case R 274/2017-2, the Second Board of Appeal of EUIPO dismissed the appeal. It found that the contested mark was inherently devoid of distinctive character and that the applicant had not demonstrated that the contested mark had acquired distinctive character through use.

9 By application lodged at the Court Registry on 20 February 2019, the applicant brought an appeal against the decision of the Second Board of Appeal, registered under number T‑105/19.

10 By judgment of 10 June 2020, Louis Vuitton Malletier v EUIPO – Wisniewski (Representation of a chequerboard pattern) (T‑105/19, not published, EU:T:2020:258), the Court annulled the decision of the Second Board of Appeal. After rejecting the applicant’s arguments seeking to challenge the lack of inherent distinctive character of the contested mark, the Court found that the Board of Appeal had infringed Article 59(2) of Regulation 2017/1001, as interpreted by the Courts of the European Union, in that it had failed to examine all the relevant evidence submitted by the applicant in order to demonstrate the distinctive character acquired through use of the contested mark and to carry out an overall assessment of that evidence.

11 Following the judgment of 10 June 2020, Representation of a chequerboard pattern (T‑105/19, not published, EU:T:2020:258), the case was remitted to the Fifth Board of Appeal, which, in the contested decision, after examining all the evidence submitted by the applicant, held that the applicant had not demonstrated distinctive character acquired through the use of the contested mark and dismissed the action.

– alter the contested decision, by holding that the contested mark has acquired distinctiveness through use;

– order EUIPO and the applicant for a declaration of invalidity to pay the costs incurred by the applicant during these proceedings.

14 In support of its action, the applicant relies, in essence, on a single plea in law, alleging infringement of Article 7(3) and of Article 59(2) of Regulation 2017/1001.

15 As the applicant obtained the international registration on 4 November 2008, with an accepted priority date of 27 May 2008, the facts of this case are governed by the material provisions of Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (see, to that effect and by analogy, order of 5 October 2004, Alcon v OHIM, C‑192/03 P, EU:C:2004:587, paragraphs 39 and 40, and judgment of 23 April 2020, Gugler France v Gugler and EUIPO, C‑736/18 P, not published, EU:C:2020:308, paragraph 3 and the case-law cited).

16 Consequently, in this case, as regards the substantive rules, the references made by the Board of Appeal in the contested decision and by the parties in their written pleadings to Article 7(3) and to Article 59(2) of Regulation 2017/1001 should be understood as referring to Article 7(3) and Article 51(2) of Regulation No 40/94 respectively, which are identical in content.

17 That said, it should be noted, as a preliminary point, that in its judgment of 10 June 2020, Representation of a chequerboard pattern (T‑105/19, not published, EU:T:2020:258), which has now become final, the Court ruled that the Board of Appeal was correct in finding that the contested mark lacked inherent distinctive character. Consequently, this action relates solely to whether the contested mark has acquired a distinctive character in consequence of the use which has been made of it, within the meaning of Article 7(3) and Article 51(2) of Regulation No 40/94.

18 According to Article 51(2) of Regulation No 40/94, where an EU trade mark has been registered in breach of, inter alia, Article 7(1)(b) thereof, which provides that trade marks which are devoid of any inherent distinctive character are not to be registered, it may nevertheless not be declared invalid if, in consequence of the use which has been made of it, it has after registration acquired a distinctive character in relation to the goods or services for which it is registered. Under Article 7(3) of Regulation No 40/94, paragraph 1(b) of that article does not apply if the trade mark has become distinctive in relation to the goods or services for which registration is requested in consequence of the use which has been made of it.

19 Acquisition of distinctive character through use of a mark requires that at least a significant proportion of the relevant public identifies the goods or services concerned as originating from a particular undertaking, because of that mark (see judgment of 20 November 2019, Rezon v EUIPO (imot.bg), T‑101/19, not published, EU:T:2019:793, paragraph 46 and the case-law cited).

20 The burden of proof of distinctive character acquired through use, pursuant to Article 51(2) of Regulation No 40/94 and Article 7(3) thereof, rests with the proprietor of the mark at issue (see, to that effect, judgment of 4 April 2019, Stada Arzneimittel v EUIPO (Representation of two facing arches), T‑804/17, not published, EU:T:2019:218, paragraph 49 and the case-law cited).

21 Accordingly, in the context of invalidity proceedings based on absolute grounds for refusal of a mark, the proprietor of that mark is required to prove either that it had acquired distinctive character owing to the use that had been made of it prior to the date on which the application for registration was filed, or that the mark had acquired such character owing to the use that had been made of it between the date of its registration and the date of application for a declaration of invalidity (see, to that effect, judgment of 15 December 2016, Mondelez UK Holdings & Services v EUIPO – Société des produits Nestlé (Shape of a chocolate bar), T‑112/13, not published, EU:T:2016:735, paragraph 117 and the case-law cited).

22 According to the case-law, in order to determine whether a mark has acquired distinctive character through the use that has been made of it, the competent authority must carry out an examination by reference to the actual situation and make an overall assessment of the evidence that that mark has come to identify the goods or services concerned as originating from a particular undertaking (see judgment of 19 June 2014, Oberbank and Others, C‑217/13 and C‑218/13, EU:C:2014:2012, paragraph 40 and the case-law cited).

23 In order to determine whether a mark has acquired distinctive character, account must be taken, inter alia, of the market share held by the mark, how intensive, geographically widespread and long-standing the use of the mark has been, the amount invested by the undertaking in promoting the mark, the proportion of the relevant class of persons who, because of the mark, identify the product as originating from a particular undertaking, statements from chambers of commerce and industry or other trade and professional associations as well as opinion polls (see judgment of 21 April 2015, Louis Vuitton Malletier v OHIM – Nanu-Nana (Representation of a grey chequerboard pattern), T‑360/12, not published, EU:T:2015:214, paragraph 90 and the case-law cited).

24 As regards the geographical scope of the proof of distinctive character acquired through use, it should be recalled that a sign may be registered as an EU trade mark under Article 7(3) of Regulation No 40/94 only if evidence is provided that it has acquired, in consequence of the use that has been made of it, distinctive character in the part of the European Union in which it did not, ab initio, have such character for the purposes of Article 7(1)(b). It follows that, with regard to a mark that is, ab initio, devoid of distinctive character in all Member States, such a mark can be registered pursuant to that provision only if it is proved that it has acquired distinctive character through use throughout the territory of the European Union (see judgment of 25 July 2018, Société des produits Nestlé and Others v Mondelez UK Holdings & Services, C‑84/17 P, C‑85/17 P and C‑95/17 P, EU:C:2018:596, paragraphs 75 and 76 and the case-law cited).

25 In that regard, the Court of Justice has stated that it would be unreasonable to require proof of such acquisition for each individual Member State (see, to that effect, judgment of 24 May 2012, Chocoladefabriken Lindt & Sprüngli v OHIM, C‑98/11 P, EU:C:2012:307, paragraph 62).

26 In that context, a distinction must be made between, first, the facts to be proved, namely the acquisition of distinctive character through use by a sign that is devoid of inherent distinctive character, and, secondly, the means of proving such facts. No provision of Regulation No 40/94 requires that the acquisition of distinctive character through use be established by separate evidence in each individual Member State (judgment of 25 July 2018, Société des produits Nestlé and Others v Mondelez UK Holdings & Services, C‑84/17 P, C‑85/17 P and C‑95/17 P, EU:C:2018:596, paragraphs 79 and 80).

27 Thus it is possible that evidence of acquisition of distinctive character through use, by a particular sign, is relevant with regard to several Member States, or even to the whole of the European Union. In particular, it is possible that, for certain goods or services, the economic operators have grouped several Member States together in the same distribution network and have treated those Member States, especially for marketing strategy purposes, as if they were one and the same national market. In such circumstances, the evidence for the use of a sign within such a cross-border market is likely to be relevant for all Member States concerned. The same is true when, due to a geographic, cultural or linguistic proximity between two Member States, the relevant public of the first has a sufficient knowledge of the products and services that are present on the national market of the second (see, to that effect, judgment of 25 July 2018, Société des produits Nestlé and Others v Mondelez UK Holdings & Services, C‑84/17 P, C‑85/17 P and C‑95/17 P, EU:C:2018:596, paragraphs 80 to 82).

28 Although it is not necessary, for the purposes of registering, on the basis of Article 7(3) of Regulation No 40/94, a mark that is, ab initio, devoid of distinctive character throughout all the Member States of the European Union, that evidence be submitted, in respect of each individual Member State, of the acquisition by that mark of distinctive character through use, the evidence submitted must nevertheless be capable of demonstrating acquisition thereof throughout the Member States of the European Union. Indeed, in the case of a mark that does not have inherent distinctive character throughout the European Union, the distinctive character acquired through use of that mark must be shown throughout that territory, and not only in a substantial part or the majority of the territory of the European Union, and consequently, although such proof may be produced globally for all the Member States concerned or separately for different Member States or groups of Member States, it is not, however, sufficient that the party with the burden of providing such evidence merely produces evidence of such acquisition that does not cover part of the European Union, even a part consisting of only one Member State (see, to that effect, judgment of 25 July 2018, Société des produits Nestlé and Others v Mondelez UK Holdings & Services, C‑84/17 P, C‑85/17 P and C‑95/17 P, EU:C:2018:596, paragraphs 83 and 87).

29 In addition, it should be borne in mind that, in EU trade mark law, the principle of unfettered adduction of evidence applies, which confers on the parties the possibility of producing before the Courts of the European Union any evidence lawfully obtained that they consider relevant to support their arguments. That unfettered adduction of evidence contributes to guaranteeing the parties a right to an effective remedy, enshrined in Article 47 of the Charter of Fundamental Rights of the European Union (see judgment of 16 December 2020, H.R. Participations v EUIPO – Hottinger Investment Management (JCE HOTTINGUER), T‑535/19, not published, EU:T:2020:614, paragraph 65 and the case-law cited).

30 Furthermore, according to settled case-law, the principle that prevails in EU law is that of the unfettered evaluation of evidence, from which it follows, in particular, that the only relevant criterion for the purpose of assessing the probative value of evidence lawfully adduced relates to its credibility. Thus, in order to assess the probative value of a piece of evidence, it is necessary to take account, in particular, of the person from whom the evidence originates, the circumstances in which it came into being, the person to whom it was addressed and whether, on the face of it, the evidence appears to be sound and reliable (see judgment of 9 September 2020, Glaxo Group v EUIPO (Shade of the colour purple), T‑187/19, not published, EU:T:2020:405, paragraph 92 and the case-law cited).

31 Lastly, it must be noted that the burden of proof imposed on the proprietor of the contested mark of demonstrating distinctive character acquired through the use of that mark must not be unreasonable. That requirement forms part of the general principles of EU law and, in particular, of the right to sound administration, also enshrined in Article 41 of the Charter of Fundamental Rights (see, to that effect, judgment of 8 July 2008, Huvis v Council, T‑221/05, not published, EU:T:2008:258, paragraph 77).

32 It is in the light of those considerations that it is appropriate to examine the single plea in law raised by the applicant, which is divided, in essence, into two parts alleging, first, errors in the approach taken by the Board of Appeal in the contested decision in examining the distinctive character acquired through use of the contested mark and, secondly, errors in the individual and overall assessments carried out by the Board of Appeal of the evidence submitted by the applicant for the purpose of demonstrating the distinctive character acquired through use of that mark.

The approach taken by the Board of Appeal in assessing the distinctive character acquired through the use of the contested mark (first part)

33 In the contested decision, the Board of Appeal decided to examine first whether the contested mark had acquired distinctive character through the use that had been made of it in Bulgaria, Estonia, Latvia, Lithuania, Slovakia and Slovenia (together, ‘the Member States concerned’), stating that it would proceed to such an examination in respect of the other EU Member States only if distinctive character acquired through use had been demonstrated for the Member States concerned. The Member States concerned were, together with Malta, the Member States in which the applicant did not have any stores. To that end, first, the Board of Appeal examined the various pieces of evidence submitted by the applicant individually, by items or by groups of items. Secondly, it assessed that evidence as a whole, in relation to each of the Member States concerned. Thirdly, it held, in the light of all the evidence submitted by the applicant, that the applicant had not demonstrated that the contested mark had acquired distinctive character through its use in the Member States concerned and that, consequently, Article 51(2) of Regulation No 40/94, read in conjunction with Article 7(3) thereof, was not applicable in the circumstances, there being no need to examine whether the contested mark had acquired distinctiveness through its use in the other EU Member States.

34 The applicant submits, in essence, that the Board of Appeal based its findings on a limited amount of evidence, specifically regarding the Member States concerned, and thus failed to make an overall assessment of all the evidence presented by the applicant. In so doing, the Board of Appeal disregarded the guidance stemming from the judgment of 10 June 2020, Representation of a chequerboard pattern (T‑105/19, not published, EU:T:2020:258).

36 First, as the Court has already ruled in the judgment of 10 June 2020, Representation of a chequerboard pattern (T‑105/19, not published, EU:T:2020:258), the Board of Appeal was able, for reasons of procedural economy, to limit its analysis to the Member States concerned, given that, if it were to find that the evidence submitted by the applicant, considered as a whole, was insufficient to prove that distinctive character had been acquired through use in those Member States, it was entitled to conclude that the mark at issue had not acquired distinctive character through use, without any need to assess whether the mark at issue had acquired such distinctive character in the other EU Member States (see, to that effect, judgment of 10 June 2020, Representation of a chequerboard pattern, T‑105/19, not published, EU:T:2020:258, paragraph 80).

37 Secondly, the applicant’s argument that the Board of Appeal based its findings on a limited amount of evidence must be rejected. Unlike the disputed decision that gave rise to the judgment of 10 June 2020, Representation of a chequerboard pattern (T‑105/19, not published, EU:T:2020:258), in which the Board of Appeal limited itself to analysing only 8 of the 68 exhibits containing evidence submitted by the applicant before EUIPO for the purpose of demonstrating distinctive character acquired through use of the contested mark, taking into consideration only the evidence referring specifically to the Member States concerned, the Board of Appeal did, in the present case, examine all the evidence submitted by the applicant, including the evidence not referring expressly to the Member States concerned.

38 Thirdly, contrary to what the applicant is claiming, the Board of Appeal did, in paragraphs 74 to 131 of the contested decision, examine whether, for each of the Member States concerned, the relevant evidence submitted by the applicant, considered as a whole, was capable of demonstrating that the contested mark had acquired distinctive character through its use in that Member State. In so doing, the Board of Appeal did carry out an overall assessment of all the relevant evidence, as required by the case-law.

39 It follows that the first part of the single plea must be rejected as unfounded.

Assessment by the Board of Appeal of the evidence submitted by the applicant (second part)

40 The applicant submits, in essence, that the Board of Appeal made a number of errors in assessing the evidence the applicant had submitted in order to demonstrate the distinctive character acquired through use of the contested mark. According to the applicant, the overall assessment of all of those pieces of evidence, in particular those concerning the value, market shares and history of the contested mark, sales invoices, advertising campaigns, evidence of use of that mark on the internet, statements from experts, opinion polls and evidence relating to infringement proceedings, demonstrates that the contested mark had acquired such a character throughout the European Union.

42 It is appropriate, therefore, to examine whether the Board of Appeal correctly assessed the evidence submitted by the applicant.

43 The applicant submits, in essence, that exhibits numbered 1 to 4 of the administrative file demonstrate that its business was one of the best-known undertakings in the luxury goods sector, as well as one of the most significant players in the leather goods industry in the EU market.

44 In the contested decision, the Board of Appeal held that that evidence did not substantiate distinctive character acquired through use of the contested mark, on the ground, first, that it did not refer specifically to the contested mark and, secondly, that it referred to the market for luxury goods, whereas the goods covered by the contested mark were intended for the general public.

45 In that regard, it must be observed that exhibits numbered 1 to 3 of the administrative file contain extracts of the most valuable brand rankings at global and at European level for the period 2008 to 2015, drawn up by market analysts such as BrandZ, Interbrand and Eurobrand, as well as brands rankings by sector, including the ‘luxury’ category. Those rankings, the accuracy of which is not disputed, show that, during that period, the applicant’s brand was one of the most valuable brands at global and European level, and that the applicant was one of the best-known luxury goods businesses in the world. Exhibit No 4 of the administrative file contains data collected by Euromonitor which are not challenged and which relate to market shares in the ‘bags and luggage’ sector (goods in Class 18), between 2008 and 2014, with data for Western Europe and for Eastern Europe. That information demonstrates that, during that period, the applicant was the top seller of bags and luggage in Western Europe and the second top seller in Eastern Europe (see, to that effect, judgment of 10 June 2020, Representation of a chequerboard pattern, T‑105/19, not published, EU:T:2020:258, paragraph 86).

46 First, it must be noted, as the applicant submits, that the Board of Appeal was wrong to disregard the relevance of all those rankings and of those data on the ground that they related to the market for luxury branded goods. Contrary to what the Board of Appeal stated, the scope of those rankings and of those data is not limited to the luxury sector. As was pointed out in paragraph 45 above, the rankings in exhibits numbered 1 to 3 of the administrative file include both luxury brands and brands which do not fall into that category, while exhibit No 4 of that file identifies the market shares of sellers of both luxury bags and luggage and of those which do not fall into that category.

47 Furthermore, the fact that the goods covered by the contested mark are targeted at the general public in no way diminishes the relevance of the fact that, in accordance with the applicant’s marketing strategy, the contested mark is positioned in the luxury segment. As the applicant rightly submits, even consumers in the general public who are unable to purchase luxury branded goods are often exposed to them and are familiar with them. The fact that a trade mark is among the best-known luxury brands may therefore, in principle, be relevant for the purposes of assessing the general public’s perception of that mark.

48 Secondly, as the applicant claims, that evidence is of some relevance as regards its geographical scope, in that it concerns the European market in general and that of Eastern Europe in particular, the region in which the Member States concerned are located.

49 However, it is important to note, thirdly, as the Board of Appeal did, that exhibits numbered 1 to 4 of the administrative file do not refer specifically to the contested mark. Neither the rankings contained in exhibits numbered 1 to 3 of that file nor the data relating to the market shares in exhibit No 4 of that file distinguish between the applicant’s various marks.

50 In those circumstances, although, admittedly, that evidence may, where appropriate, constitute at most a contextual element, which may be taken into account in the overall assessment of all the evidence submitted, the fact remains that it does not provide direct and specific information on the contested mark, whether taken in isolation or in conjunction with another of the applicant’s marks, bearing in mind that the burden of proving distinctive character acquired through use rests with the applicant (see paragraph 20 above).

51 The applicant claims, in essence, that exhibit No 5 of the administrative file, which contains an internal document from the applicant’s company and magazine excerpts relating to its history and to that of the chequerboard pattern and of the contested mark, together with the other evidence that the applicant submitted, demonstrates that the relevant public was exposed to the contested mark to a high degree.

52 In the contested decision, the Board of Appeal found, in essence, that that evidence did not provide any information as to whether the relevant public perceived the contested mark as a trade mark.

53 In that regard, first, it is sufficient to note that an internal document, as such, tells us nothing as to the relevant public’s perception of the contested mark. Secondly, as regards the magazine excerpts, the applicant has not submitted any evidence to show that they were distributed or disseminated to the relevant public in the Member States concerned or that the relevant public became aware of them by other means. Therefore, contrary to what the applicant alleges, the Board of Appeal did not err in dismissing the relevance of those documents.

54 The applicant submits, in essence, that exhibit No 7 of the administrative file, which contains a selection of invoices corresponding to sales of goods in Class 18 bearing the contested mark to persons residing in the Member States concerned, together with the other evidence submitted by the applicant, demonstrates that the relevant public has been exposed to the contested mark to a high degree.

55 In the contested decision, the Board of Appeal found that that exhibit contained only a ‘very small’ number of invoices concerning sales to persons residing in the Member States concerned, more specifically, around 200 for Slovakia, 30 for Bulgaria and 20 for each of Estonia, Latvia, Lithuania and Slovenia. According to the Board of Appeal, such a number of invoices is not sufficient to establish that, on account of intensive and extensive use of the contested mark, the relevant public in the Member States concerned recognises the commercial origin of the goods concerned when confronted with that mark.

56 As a preliminary point, it should be borne in mind that, according to the case-law, the evidence relating to the volume of sales of goods or services bearing a mark, including sales invoices, may be taken into consideration for the purposes of demonstrating that a mark has acquired distinctive character through use, in so far as it may corroborate other evidence such as statements from professional associations or market studies (see, to that effect, judgment of 29 January 2013, Germans Boada v OHIM (Manual tile-cutting machine), T‑25/11, not published, EU:T:2013:40, paragraphs 74 and 75).

57 In this instance, although the applicant does not dispute the accuracy of the findings summarised in paragraph 55 above, it nevertheless claims that it is a ‘selection’ of invoices, so that the actual volume of sales of goods in Class 18 bearing the contested mark to persons residing in the Member States concerned is, in fact, higher.

58 Such a general argument cannot, however, call into question the Board of Appeal’s assessment of that evidence. It is for the applicant to submit sufficient evidence to demonstrate the distinctive character acquired through use of the contested mark, including by selecting a sample of invoices representative of its activities throughout the European Union.

59 That said, first, account should also be taken of the fact, correctly raised by the applicant, that the small number of invoices regarding the Member States concerned might be explained, in part, by the fact that the applicant does not have any stores in those Member States. Accordingly, those invoices in fact relate to sales made in one of its stores located in another Member State to persons who, at the time of purchase, had indicated that they resided in one of the Member States concerned.

60 Secondly, awareness by the relevant public of a luxury brand is not necessarily proportionate to the volume of sales of goods bearing that mark. In so far as luxury brands pursue a marketing strategy based on rarity or exclusivity, as in the present case, the relevant public is likely to be aware of it, even if it does not purchase goods bearing those marks.

61 It follows that those invoices were not themselves sufficient to demonstrate distinctive character acquired through use of the contested mark in the Member States concerned. However, their relevance in the context of the overall assessment of the evidence submitted by the applicant cannot be ruled out.

The excerpts from catalogues, the advertising campaigns and the media coverage of the contested mark

62 The applicant claims, in essence, that exhibits numbered 8 to 39 of the administrative file, which contain, inter alia, excerpts from catalogues and brochures, information on its advertising campaigns and media plans in fashion magazines, as well as press cuttings showing images of goods in Class 18 bearing the contested mark, together with the other evidence submitted by the applicant, demonstrate that the relevant public was exposed to the contested mark to a high degree.

63 In the contested decision, the Board of Appeal examined that evidence together and found, in essence, that it showed that the applicant’s main commercial and promotional strategy targeted Member States other than the Member States concerned. According to the Board of Appeal, that finding was corroborated by, inter alia, the content and language of magazines and catalogues containing images of goods in Class 18 bearing the contested mark.

64 As a preliminary point, it should be noted that evidence relating to trade mark advertising campaigns in the press, on the radio or on television, as well as excerpts from catalogues and brochures containing images of goods bearing that mark, may constitute indications that the contested mark has acquired distinctive character through use (see, to that effect, judgment of 14 December 2017, bet365 Group v EUIPO – Hansen (BET365), T‑304/16, EU:T:2017:912, paragraph 71).

65 In addition, it must be pointed out that, depending on the marketing strategy of the undertaking concerned or the geographical, cultural or linguistic proximity between certain Member States, such advertising campaigns may target several Member States or be broadcast simultaneously in the media zone of those Member States. As regards the intensity of use of the mark at issue in such media, the proprietor of that mark may submit information capable of demonstrating that a significant proportion of the relevant public in those Member States was exposed to those advertising campaigns, concerning, for example, the number of magazines distributed in those Member States, the frequency and the times at which advertisements were broadcast on television or radio channels and statistics on the audience figures achieved.

66 In the present case, it is important to point out, as the applicant did, that the fact that some of the evidence in exhibits numbered 8 to 39 of the administrative file contains elements of text in languages other than the official languages of the Member States concerned does not, in itself, mean that they are entirely irrelevant for the relevant public in the Member States concerned. First, promotional publications relating to fashion goods, such as those in the present case, often focus on images rather than on text. Secondly, it cannot be dismissed out of hand that the relevant public of those Member States has sufficient knowledge of a language other than the official language of the Member States concerned.

67 That said, it should be noted, first, that the information sheets contained in exhibit No 8 of the administrative file are marked as being ‘Strictly confidential’ or ‘For internal use only’ and that the statement contained in exhibit No 10 of the administrative file is an internal document from the applicant, prepared in the context of the present proceedings. The applicant has not demonstrated that those documents were made public or that the relevant public in the Member States concerned was exposed to those documents.

68 Secondly, the applicant has not demonstrated that the catalogues and brochures in exhibits numbered 9 and 11 to 13 of the administrative file were disseminated in one or other of the Member States concerned. On the contrary, as the Board of Appeal noted, their content suggests that that was not the case. In particular, the catalogue in exhibit No 11 of the administrative file and one of the catalogues in exhibit No 12 of the administrative file contain price lists applicable in Member States other than the Member States concerned.

69 Thirdly, both the advertising campaigns and the media plans in magazines described in exhibits numbered 14 to 22 of the administrative file and the press cuttings contained in exhibits numbered 23 to 39 of that file are specifically intended for the relevant public in certain Member States other than the Member States concerned. The applicant has not put forward any specific evidence capable of demonstrating, in particular, that those advertising campaigns or those magazines were also disseminated in one or other of the Member States concerned, or that the relevant public in those Member States was exposed to them by other means (see paragraph 65 above).

70 Moreover, the mere possibility, raised by the applicant, that the relevant public in the Member States concerned may have been exposed to those advertising campaigns or to those magazines, for example during travel to Member States where they had been distributed, cannot suffice to demonstrate the relevance of that evidence for assessing the relevant public’s perception in the Member States concerned.

71 It follows that the evidence in exhibits numbered 8 to 39 of the administrative file cannot be considered relevant for the purpose of demonstrating distinctive character acquired through use of the contested mark in the Member States concerned.

The statements concerning the distribution of magazines containing advertisements for goods in Class 18 bearing the contested mark in the Member States concerned

72 The applicant submits, in essence, that exhibit No 41 of the administrative file, which contains information concerning the distribution of magazines containing advertisements for goods in Class 18 bearing the contested mark in the Member States concerned, together with the other evidence submitted by the applicant, shows that the relevant public in the Member States concerned was exposed to the contested mark to a high degree.

73 In the contested decision, the Board of Appeal found, first, that the number of copies of such magazines distributed in the Member States concerned was ‘low’ and, secondly, that, according to those statements, those copies were ‘distributed’ in the Member States concerned but had only rarely been sold to end consumers, which gives the impression that those copies did not often reach end consumers but rather were distributed to professional consumers.

74 It should be noted that that exhibit contains several statements from legal representatives of trade magazines in the fashion sector, such as Marie-Claire, Elle, Glamour, GQ, Madame Figaro, Vanity Fair and Vogue, according to which copies of those magazines containing advertisements for goods in Class 18 bearing the contested mark were distributed in the Member States concerned during the years 2008 to 2010, as follows: at least 14 010 copies in Estonia, 1 613 in Slovenia, 1 250 in Bulgaria, 780 in Slovakia, 650 in Latvia and 200 in Lithuania.

75 In that regard, it must be observed, as the applicant did, that the magazines mentioned are trade magazines in the fashion sector and that the statements from their legal representatives, the probative value of which is not disputed, provide information regarding the distribution of those magazines in the Member States concerned.

76 In addition, the distinction that the Board of Appeal appears to draw between copies of magazines ‘distributed’ and ‘sold to end consumers’ is not clear. In any event, the Board of Appeal’s assertion that those magazine copies were sold to professional consumers, and not directly to end consumers, is not apparent from the content of those statements.

77 That being so, as was, in essence, noted by the Board of Appeal, the small number of copies of such magazines distributed in those Member States suggests that the advertising campaigns conducted by the applicant in the pages of those magazines did not reach a significant part of the relevant public in the Member States concerned. That assessment must nevertheless be qualified as regards Estonia, where at least 14 010 copies of such magazines were distributed, which is not insignificant, given the small size of the Estonian market. Moreover, it should be noted that, of those copies, 13 000 were copies of the Estonian version of the magazine Marie-Claire.

78 The applicant claims, in essence, that exhibits numbered 40 and 42 to 46 of the administrative file, which contain several pieces of evidence concerning the use of the contested mark online, demonstrate that the relevant public was exposed to that mark on the internet to a high degree.

79 In the contested decision, the Board of Appeal found, in essence, that that evidence was either irrelevant or was insufficient to establish distinctive character acquired through use of the contested mark in the Member States concerned.

80 As a preliminary point, it should be noted that, with the expansion of electronic commerce and, more generally, the growing importance of the internet in the course of trade, the relevant public’s perception may, nowadays, be largely influenced by the presence and promotion of a brand in the virtual realm. Such evidence may thus be likely to play an increasingly important role in assessing distinctive character acquired through use of a trade mark. For that type of evidence to be relevant for that purpose, however, the proprietor of the mark at issue must demonstrate that the websites in question and, in particular, the internet pages on which that mark was displayed, promoted or marketed, target or are consulted by a significant part of the relevant public in the Member States in which the mark is, ab initio, devoid of inherent distinctiveness.

81 To that end, account should be taken, in particular, of the top-level domains of the websites in question, their language and their content.

82 Thus, for example, the fact that the top-level domain and the language of a website are associated with a particular Member State is an indication of the fact that that website specifically targets the relevant public of that Member State. Where the top-level domain is not associated with a particular Member State, for example ‘.com’, ‘.eu’, ‘.net’, or where that site appears in several languages, including the official language of the Member State concerned, or where the language of that site is understood by a significant part of that Member State, the evidence on that site may be relevant for assessing the perception of the relevant public in that Member State. The same applies as regards certain networks or social media spread throughout the territory of the European Union. In addition, in order to prove the intensity of use of the trade mark on such sites, the proprietor of that trade mark must demonstrate, for example by presenting a traffic analysis report for that site during the relevant period, that a significant number of internet users in the Member State concerned consulted or interacted with the content of the website in question. So for example, data relating to the number of visits to that website, of comments or of other forms of web user interactions in the Member State concerned may be taken into consideration.

83 In addition, evidence showing that search engine and social network algorithms display non-sponsored search results which, for search terms describing the trade mark at issue, systematically return the trade mark proprietor’s goods, may also be relevant.

84 By contrast, the mere fact that a website on which the mark at issue was promoted is accessible in certain Member States is not sufficient to demonstrate that a significant part of the relevant public in those Member States has been exposed to that mark. The mere existence of a website is not capable of establishing the intensity of use of a trade mark or of the relevant public’s exposure to that mark (see, to that effect and by analogy, judgment of 19 November 2014, Out of the blue v OHIM – Dubois and Another (FUNNY BANDS), T‑344/13, not published, EU:T:2014:974, paragraph 29).

85 In the present case, as regards, first, exhibit No 40 of the administrative file, that exhibit contains printouts from two Slovakian websites in Slovak, namely the websites ‘www.moda.sk’ and ‘www.modneinspiracie.sk’, containing images of goods in Class 18 bearing the contested mark.

86 While it is true, as the applicant submits, that the abovementioned websites targeted the relevant Slovakian public, as evidenced by the top-level domains and the language used, the fact remains that the applicant has not submitted any information regarding the intensity of use of the mark on those websites, such as the number of visits or of interactions with their content during the period concerned (see paragraphs 80 to 82 above). That evidence does not therefore, in itself, establish whether a significant part of the relevant Slovakian public was exposed to the contested mark.

87 Secondly, exhibit No 42 of the administrative file contains statistics relating to the part of the population using the internet during the period 2000 to 2014, at the worldwide level and by country. However, those data do not provide any information as to the relevant public’s perception of the contested mark and are therefore irrelevant.

88 Thirdly, exhibit No 43 of the administrative file contains results of a search on the images section of the website ‘www.google.it’ using the keywords ‘Damier Azur’. However, that evidence relates to a website the top-level domain of which is associated with Italy, the search results also being displayed in Italian. The applicant has failed to explain how that evidence is relevant to the relevant public in the Member States concerned (see paragraphs 80 to 82 above).

89 Fourthly, exhibit No 44 of the administrative file contains a report drawn up by LexisNexis on the use of the keywords ‘Damier Azur’ on social media during the period 1 April to 30 June 2015. That report shows that those words had been used 1 745 times, primarily on Twitter, and that, in 99% of cases, they were associated with the applicant’s goods. In addition, that report shows that around 1% of the total number of references to those words on social media in general originated from Bulgarian internet users, while around 1% of the total number of references to those words on Twitter in particular originated from Slovakian internet users. The other references to those words examined in that report originated from internet users from Member States other than the Member States concerned.

90 In that regard, it is important to note that whilst, in principle, the fact that a search engine or social network algorithm associates the name of the contested mark and the goods made by the proprietor of that mark may be a relevant indicator for the purposes of assessing distinctive character acquired through use of the contested mark (see paragraph 83 above), it remains the case that the Board of Appeal rightly found that, given the small percentages of data concerning the relevant Bulgarian and Slovakian public, and given the low number of repetitions of the keywords in question, that evidence did not demonstrate an exposure of a significant part of that public to the contested mark.

91 Fifthly, exhibit No 45 of the administrative file contains a report drawn up by Sprinklr on the use of the keywords ‘Damier Azur’ on social media during the period 22 September 2015 to 19 January 2016. That report shows, inter alia, that the images which most often accompanied the expression ‘Damier Azur’ on Instagram were images of the applicant’s goods and that those words were most often used by sellers of fake versions of the applicant’s goods or of second-hand goods thereof.

92 However, as the Board of Appeal noted, that report contains only data at the worldwide level and makes no distinction between the countries of origin of internet users who had used the keywords ‘Damier Azur’. Whilst it cannot be excluded that such data, on account of their international scale, also include the Member States concerned, the fact remains that they do not specifically provide information on the perception of the contested mark by the relevant public in the Member States concerned.

93 Sixthly, exhibit No 46 of the administrative file contains press cuttings and screenshots of websites containing photographs of celebrities wearing goods in Class 18 bearing the contested mark.

94 In that regard, it should be noted that the press cuttings come from several magazines in paper form originating in Austria, Spain, France, Hungary, Italy, the Netherlands, the United Kingdom and Sweden. However, in the absence of arguments or substantiated evidence showing that those magazines or images were distributed to the relevant public in the Member States concerned, or that that public would have become aware of them by other means, the Board of Appeal cannot be criticised for having found that they did not primarily target those Member States.

95 As for the screenshots of websites, it must be stated, first of all, that some of them, such as the websites ‘www.cas.sk’ and ‘www.lesk.sk’ specifically target the relevant Slovakian public. However, the applicant has failed to submit data on the intensity of use of the contested mark on those websites.

96 Next, certain websites, namely ‘www.google.fr’, ‘www.dailymail.co.uk’, ‘www.sina.com.cn’, ‘www.herald.ie’ and ‘www.stylosophy.it’, are associated with countries other than the Member States concerned. As is apparent from paragraph 82 above, that is indicative of the fact that those sites did not target the relevant public in the Member States concerned.

97 Lastly, as regards the sites where the top-level domain is general, namely ‘www.upscalehype.com’, ‘www.coolspotters.com’, ‘www.bloguez.com’, ‘www.bagbliss.com’ and ‘www.styleestate.com’, suffice it to state that the applicant has not submitted any substantiated evidence demonstrating that a part of the relevant public in the Member States concerned consulted them. Therefore, the Board of Appeal cannot be criticised for having found that they did not primarily target the Member States concerned (see paragraph 82 above).

98 The applicant submits, in essence, that the experts’ statements in exhibits numbered 47 to 57 of the administrative file confirm that a significant portion of EU consumers associate the contested mark with the applicant.

99 In that regard, it should be recalled that sworn statements, particularly from chambers of commerce and industry, other professional associations or independent bodies, or from public authorities, relating to the relevant public’s perception of a trade mark, constitute ‘direct’ evidence of the acquisition of distinctive character through use, in particular where they emanate from independent sources and their content is sound and reliable (see, to that effect, judgments of 7 June 2005, Lidl Stiftung v OHIM – REWE-Zentral (Salvita), T‑303/03, EU:T:2005:200, paragraph 42; of 28 October 2009, BCS v OHIM – Deere (Combination of the colours green and yellow), T‑137/08, EU:T:2009:417, paragraphs 54 to 56; and of 29 January 2013, Manual tile-cutting machine, T‑25/11, not published, EU:T:2013:40, paragraphs 74 and 75).

100 In the present case, first, it should be noted that exhibits numbered 47 to 49 and 51 to 57 of the administrative file contain statements by experts on intellectual property and on fashion from France, Denmark, Italy, Spain, Finland, Portugal, the United Kingdom, Poland and Germany. However, it should be noted, contrary to what the applicant claims, that, in so far as those statements related specifically to the relevant public’s perception in the abovementioned Member States, the Board of Appeal was entitled to reject them as irrelevant.

101 Secondly, exhibit No 50 of the administrative file contains two statements drafted in identical terms, dating from November 2015, one from a representative of an Estonian independent body of intellectual property experts (namely the Estonian Intellectual Property and Technology Transfer Centre) and the other from a representative of an Estonian magazine (namely Cosmopolitan Estonia). Those statements affirm, in essence, that the applicant had made intensive use of the contested mark in Estonia in connection with goods in Class 18 since 2008, and that Estonian consumers perceived it as being a trade mark and associated it with the applicant.

102 In the contested decision, the Board of Appeal found, in essence, that that piece of evidence had only limited probative value due to the contradictions contained in those statements. Moreover, according to the Board of Appeal, exhibits numbered 7 and 41 of the administrative file showed, at most, isolated and not long-standing use of the contested mark in Estonia.

103 In that regard, first of all, it should be noted that neither the Board of Appeal nor EUIPO has disputed the independence vis-à-vis the applicant of the authors of those statements, their expertise or their reputation.

104 Next, it should be noted, as the applicant did, that the content of those statements is clear, and that, contrary to the Board of Appeal’s finding, they are not contradictory. Those statements read as follows: ‘I believe that [consumers] will consider Louis Vuitton Malletier’s “Damier” pattern represented below as a trademark’ and ‘I am certain that upon seeing leather goods products bearing this pattern, Estonian consumers would not hesitate to link them to Louis Vuitton Malletier’.

105 An overall reading of those statements shows that the use of the words ‘believe’ and ‘be certain’ is not at all contradictory, as the Board of Appeal found. The signatories of those statements clearly expressed their belief that the contested mark would be perceived by the relevant Estonian public as a trade mark, in particular, as an indication that the goods at issue were the applicant’s goods. Thus it appears beyond doubt, from the content of those statements, that the applicant had made use of the contested mark in Estonia in connection with goods in Class 18 since 2008 such as to create, for the relevant public of that Member State, first, a perception of the contested mark as a trade mark and, secondly, a link between that mark and the commercial origin of the goods covered as originating from the applicant.

106 The applicant is also right to claim that the fact that those statements are identical in content does not diminish their probative value. Indeed, according to the case-law, the fact that a sworn statement was made at the request of one party and that that party may have coordinated its drafting does not, in itself, undermine its content and probative value, given that, in the absence of evidence to the contrary, it must be assumed that the signatory of the statement signed it voluntarily and takes responsibility for the content thereof (see, to that effect, judgment of 28 October 2009, Combination of the colours green and yellow, T‑137/08, EU:T:2009:417, paragraphs 50 and 51).

107 Lastly, in accordance with the case-law referred to in paragraph 99 above, sworn statements constitute ‘direct’ evidence of the acquisition of distinctive character through use, in particular when they come from independent sources and their content is sound and reliable. That is so in the case of the experts’ statements in question.

108 That conclusion is in no way called into question by the Board of Appeal’s reference to exhibits numbered 7 and 41 of the administrative file. The relationship between the various pieces of evidence is relevant only in the context of the overall assessment of that evidence.

109 Therefore, the Board of Appeal was wrong to deny the high probative value of the statements in exhibit No 50 of the administrative file.

110 The applicant claims, in essence, that the polls in exhibits numbered 58 and 59 of the administrative file confirm that a significant proportion of EU consumers associates the contested mark with the applicant.

111 In that regard, it should be remembered that opinion polls or market studies seeking to determine which part of the relevant public associates the mark at issue with the undertaking concerned constitute ‘direct’ evidence of acquisition of distinctiveness through use, in particular where they contain non-leading questions and are based on a representative sample (see, to that effect, judgments of 29 January 2013, Manual tile-cutting machine, T‑25/11, not published, EU:T:2013:40, paragraphs 74, 75 and 88, and of 19 June 2019, adidas v EUIPO – Shoe Branding Europe (Representation of three parallel stripes), T‑307/17, EU:T:2019:427, paragraph 131).

112 Such opinion polls or market studies may, where appropriate, relate to the perception of the relevant public of a single Member State or of several Member States taken together, or even of a region of the European Union, where, in particular, economic operators have grouped several Member States together in the same distribution network and have treated those Member States, especially for marketing strategy purposes, as if they were one and the same market or where, due to geographical, cultural or linguistic proximity between certain Member States, the relevant public of those Member States has sufficient knowledge of the goods or services present on the national market of others (see the case-law cited in paragraph 27 above).

113 In the present case, the purpose of the polls in exhibits numbered 58 and 59 of the administrative file, carried out by IPSOS, was to determine whether the relevant public in France, Germany, the United Kingdom, Spain, Italy, Hungary, Poland, Romania, Sweden and the Netherlands associated the contested mark with the applicant. Therefore, contrary to the applicant’s submission, to the extent that those polls related specifically to the perception of the relevant public in the abovementioned Member States, and that the applicant has not submitted any substantiated argument or evidence showing that those polls were also relevant for the purposes of assessing distinctive character acquired through use of the contested mark in the Member States concerned, the Board of Appeal was entitled to reject them as irrelevant.

114 The applicant submits, in essence, that the evidence relating to the infringement proceedings concerning the contested mark, contained in exhibits numbered 61 to 65 and 67 to 69 of the administrative file, confirms that a significant proportion of EU consumers associates the contested mark with the applicant.

115 In the contested decision, the Board of Appeal found, in essence, that that evidence was either irrelevant or was insufficient to demonstrate distinctive character acquired through use of the contested mark in the Member States concerned.

116 In that regard, it is appropriate to note, as the Board of Appeal did, and in respect of which the parties are in agreement, that the evidence relating to infringement proceedings concerning the mark in question may be relevant for the purposes of assessing distinctive character acquired through use of that mark.

117 In the present case, first, it must be noted that exhibit No 61 of the administrative file contains a statement issued by the applicant’s intellectual property lawyer relating to goods in Class 18 bearing the contested mark, seized in infringement proceedings in Slovenia, Hungary, France, Denmark, the Czech Republic and Bulgaria. In particular, according to that statement, such goods were seized in Slovenia between 2009 and 2015, and in Bulgaria in 2015, and Annexes A and F to that statement contain a number of images of such goods seized in those Member States.

118 It may be held, as the Board of Appeal did, that that statement contains no information as regards the volume and frequency of those seizures in the abovementioned Member States. In the absence of such information, and even if, as the applicant claims, such products placed on the market of one Member State could be found on the market of another, that evidence and those arguments remain too general and unsubstantiated.

119 Secondly, exhibits numbered 62 to 65 of the administrative file contain statements from independent public authorities in Denmark, the United Kingdom and Italy relating mainly to criminal proceedings for infringement of the contested mark and to seizures of goods bearing that mark, as well as to the distinctiveness of the contested mark and the perception of that mark by the relevant public in those countries, in particular as regards the link made by that public between that mark and the applicant, while exhibit No 68 of that file contains a comparison between original goods in Class 18 bearing the contested mark and goods seized in the Channel Tunnel. Exhibits numbered 67 and 70 of the same file contain decisions of the Sąd Rejonowy w Pruszkowie, II Wydział Karny (District Court, Pruszków, Criminal Division No 2, Poland) and of the Sąd Okręgowy w Warszawie, X Wydział Karny Odwoławczy (Regional Court, Warsaw, Criminal Appeal Division No 10, Poland) respectively, in the context of criminal infringement proceedings against the applicant for a declaration of invalidity, along with their translations into English, and images of flap bags, wallets and zipped bags available on the market. However, the applicant has failed to specify how that evidence is relevant for assessing the perception of the contested mark by the relevant public in the Member States concerned.

120 Thirdly, exhibit No 69 of the administrative file contains images of goods bearing the contested mark which, according to the applicant, are counterfeit goods, featuring on several websites, namely (i) ‘www.amazon.fr’, ‘www.marktplaats.nl’, ‘www.olx.pt’ and ‘www.olx.ro’ and (ii) www.milanuncios.com’, ‘www.amazon.com’, ‘www.instagram.com’, ‘www.gumtree.com’ and ‘www.etsy.com’. In that regard, the same considerations as those set out in paragraphs 96 and 97 above apply mutatis mutandis.

– Assessment of the distinctive character acquired through the use of the contested mark in Estonia

121 In the contested decision, the Board of Appeal found that the applicant had not demonstrated that the contested mark had acquired distinctive character through its use in Estonia.

122 In that regard, in the first place, it must be recalled that, for the reasons set out in paragraphs 101 to 109 above, the sworn statements contained in exhibit No 50 of the administrative file have a high probative value capable of demonstrating that the contested mark has acquired a distinctive character through the use that has been made of it in Estonia. Those statements are direct evidence of distinctive character acquired through use of the contested mark in Estonia, since they emanate, as in this case, from independent sources and their content is sound and reliable.

123 In the second place, as for the other relevant evidence with regard to the relevant public in that Member State, it should be observed that, although it is not, in itself, conclusive, it is nonetheless able to corroborate the sworn statements referred to in paragraph 122 above and, in the overall assessment of the evidence, to contribute to the demonstration of the distinctive character acquired through use of the contested mark by that public.

124 First, as has been pointed out in paragraphs 72 to 77 above, it is apparent from exhibit No 41 of the administrative file that at least 14 010 copies of magazines well known in the fashion sector, containing advertisements for goods in Class 18 bearing the contested mark, were distributed in Estonia between 2008 and 2010. Although that number of copies is not, admittedly, very large, nor is it negligible, given the small size of the Estonian market. That evidence, encompassing the inclusion of advertisements for the contested mark in the Estonian version of the magazine Marie-Claire, demonstrates that the relevant Estonian public has had some exposure to the contested mark, through advertising campaigns, and that the latter have, at least in part, specifically targeted the relevant public of that Member State.

125 Secondly, as has been set out in paragraphs 43 to 50 above, it is apparent from exhibits numbered 1 to 4 of the administrative file that the applicant’s trade marks, taken together, including therefore the contested mark, are among the most significant marks on the market, particularly in Eastern Europe. Although, admittedly, as has been pointed out in paragraph 50 above, that evidence does not provide direct and specific information on the perception of the contested mark itself by the relevant Estonian public, it is nonetheless capable of providing a more general and contextual indication of the positioning of the applicant’s marks in that region of the European Union.

126 Thirdly, the number of invoices submitted by the applicant in exhibit No 7 of the administrative file and corresponding to sales of goods in Class 18 bearing the contested mark to persons residing in Estonia is small. However, as was noted in paragraph 59 above, that fact could be explained, in part, by the fact that the applicant does not have any stores in Estonia. Moreover, in the case of luxury brands, the volume of sales may itself be of lesser importance, in so far as that volume must be compared with the price of those products and the image of exclusivity projected by the brand. As regards such trade marks, it is well known that a significant part of the relevant public may be able to associate them with a given undertaking, even though they are not in a position to purchase that type of goods.

127 Fourthly, the Board of Appeal was wrong to base its argument on the fact that most of the evidence in the file did not explicitly mention Estonia or, in any event, did not allow any conclusion to be drawn as regards the perception of the relevant Estonian public. The mere fact that the applicant submitted other evidence that makes no reference to Estonia cannot call into question the evidence relevant for that Member State, particularly as, according to the case-law, the applicant is not obliged to provide the same types of evidence as regards the different Member States (see, to that effect, judgment of 28 October 2009, Combination of the colours green and yellow, T‑137/08, EU:T:2009:417, paragraph 39 and the case-law cited).

128 The overall assessment of all the evidence, such as stems from paragraphs 121 to 127 above, leads the Court to find that the applicant has demonstrated to the requisite legal standard that the contested mark has acquired distinctive character through its use in Estonia.

– The assessment of the distinctive character acquired through the use of the contested mark in the other Member States concerned

129 In the contested decision, the Board of Appeal found that the applicant had not demonstrated that the contested mark had acquired distinctive character through its use in Lithuania, Latvia, Slovakia, Slovenia or in Bulgaria.

130 In the first place, as the Board of Appeal noted, exhibits numbered 7, 40, 41, 44, 46 and 61 of the administrative file, which specifically mention Lithuania, Latvia, Slovakia, Slovenia or Bulgaria, do not, taken individually or as a whole, demonstrate that a significant part of the relevant public in those Member States was exposed to the contested mark and would associate it with the applicant. While that evidence shows that consumers from those Member States may have been exposed to the contested mark, either it does not contain information as to the intensity of that use or it attests to insufficient use (see paragraphs 54 to 61, 72 to 77, 85, 86, 89, 90, 95, 117 and 118 above).

131 In the second place, as regards all the other evidence that does not specifically mention those Member States, and in particular evidence concerning the use of the contested mark on the internet and the infringement proceedings, it does not provide any information as to the intensity of the exposure of the relevant public of those Member States to the contested mark.

132 In the third place, while it is true that exhibits numbered 1 to 4 of the administrative file contain background information relevant in particular to the Eastern European Member States, it is not, in this instance, corroborated by the other evidence.

133 Accordingly, the Board of Appeal did not err in finding that the applicant had not demonstrated that the contested mark had acquired distinctive character through its use in Lithuania, Latvia, Slovakia, Slovenia or Bulgaria.

134 That finding is not called into question by the applicant’s other arguments.

135 First, the applicant submits that the analysis, in the contested decision, of distinctive character acquired through use of the contested mark is detached from reality, since it ignores the fact that, throughout the European Union, consumers engage in homogeneous behaviour as regards luxury brands, particularly because they travel and use the internet regularly. However, that argument is too general in nature. Given that the burden of proof of the acquisition of distinctive character through use lies with the proprietor of the mark, it is for the proprietor to adduce specific and substantiated evidence for that purpose (see paragraph 20 above).

136 Secondly, the applicant claims, in essence, that the distinctive character acquired through use of the contested mark in the Member States concerned is corroborated by the geographical and cultural proximity of Latvia and Lithuania to Poland and Sweden, on the one hand, and of Bulgaria, Slovakia and Slovenia to Romania, on the other hand, it being noted that, according to the applicant, the mark had acquired a distinctive character with consumers in Poland, Sweden and Romania.

137 However, that argument is not at all substantiated. The applicant has not adduced any evidence to show that, due to their geographical and cultural proximity, the relevant Latvian and Lithuanian public had sufficient knowledge of the goods or services on the Polish and Swedish markets, or that the relevant Bulgarian, Slovenian or Slovakian public had such knowledge of the Romanian market, within the meaning of the case-law cited in paragraph 27 above. Nor has the applicant demonstrated, or even alleged, that it had grouped those Member States in the same distribution network or that it had treated them, particularly from the marketing strategy perspective, as if they constituted one and the same market.

138 Thirdly, nor may the applicant’s argument that the distinctive character acquired through use of the contested mark in Bulgaria, Slovakia and Slovenia is corroborated by the fact that those Member States are ‘in a strategic area for the circulation of counterfeit products in Eastern Europe’ be upheld due to its being too general in nature.

139 Fourthly, whilst the applicant is admittedly right to argue that the burden of proof that weighs on the applicant to demonstrate distinctive character acquired through use of the contested mark must not be unreasonable (see paragraph 31 above), the considerations set out, inter alia, in paragraphs 56, 64, 65, 80 to 84, 99, 111, 112 and 116 above demonstrate that it was entirely open to the applicant to adduce various types and means of accessible evidence concerning either a single Member State or several Member States, taken together, or the whole of the European Union, provided it was sufficiently specific, substantiated and credible.

140 It follows from the foregoing that, in the contested decision, the Board of Appeal was entitled to find that the applicant had not demonstrated that the contested mark had acquired distinctive character through its use in the Member States concerned, except as regards Estonia.

141 Therefore, since the applicant has not, contrary to the requirements of the case-law cited in paragraphs 24 to 28 above, demonstrated that the contested mark had acquired distinctive character through its use in all the Member States of the European Union, the second part of the single plea in law raised by the applicant in support of its claim for annulment and alteration and the single plea in law as a whole must be rejected and, consequently, the action must be dismissed in its entirety.

142 Under Article 134(1) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.

143 Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by EUIPO.

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You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> Louis Vuitton Malletier v EUIPO - Wisniewski (Representation d'un motif a damier II) (EU trade mark - Judgment) [2022] EUECJ T-275/21 (19 October 2022) URL: http://www.bailii.org/eu/cases/EUECJ/2022/T27521.html Cite as: ECLI:EU:T:2022:654, [2022] EUECJ T-275/21, EU:T:2022:654, [2023] ETMR 4

Court of Justice of the European Communities (including Court of First Instance Decisions)