LV appeals against a trade mark examiner’s decision that its application mark should be construed and therefore examined as a repeating pattern

Restricted trade mark protection accorded to Louis Vuitton Malletier for its Flower Quatrefoil Marks following a careful consideration by the Registrar on whether the said mark is inherently distinctive in designating its commercial origin.

 

Case:

In the matter of a trade mark application by Louis Vuitton Malletier [2023] SGIPOS 10 

 

Tribunal/Court:

Intellectual Property Office of Singapore (“IPOS”) (ex parte hearing before the Principal Assistant Registrar)

 

Type:

Trade Mark Application

 

Trade Mark:

 (“Application Mark”)

 

Applicant:

Louis Vuitton Malletier (the “Applicant”) is a luxury fashion company, headquartered in Paris, France. The Applicant is especially known for its luggage bags and purses. In addition, the company manufactures a variety of items including high quality leather products, wallets, clothing, sunglasses and most recently, jewellery.

 

Background of the Matter:

1. The Applicant applied via the Madrid Protocol to register Application Mark for goods in classes 9, 14, 18 and 25 in Singapore. The application was refused by the examiner (despite several rounds of submissions by the Applicant) on the basis that the trade mark was not distinctive.
 

2. It is important to note that in all of the Applicant’s submission, despite being invited to do so, the Applicant did not file evidence showing that the mark had acquired technical distinctiveness as a result of use made of it in Singapore.

 

3. In summary, the Examiner (of the trade mark application) was of the view that due to the prevalence of using graphical patterns on goods to enhance the visual appeal of goods, the public is likely to perceive the Trade Mark as an embellishment rather than a trade mark to denote commercial origin.

 

4. The Applicant requested for an ex parte hearing.

 

Issue:

Whether protection can be conferred on the Application Mark.

 

Applicant’s arguments:

1. The Application Mark should not be characterised as a repeating pattern

The Application Mark should be assessed on the basis that it “will be used in relation to the relevant goods or packaging thereof in the form it was filed” and not as a pattern  mark to be applied throughout the surface of the relevant goods or packaging thereof e.g.

2. The Application Mark is inherently technically distinctive

- The Application Mark consists of 3 devices, each of which has been registered as trade marks in the relevant classes.

- UKIPO Manual provides that pattern marks that are “fanciful, unusual and/or arbitrary, [or] departs from the norm or customs of the sector” can be inherently distinctive.

 

3. The Application Mark is comparable to other pattern marks which have been accepted for registration in Singapore.

4. The Application Mark has been successfully registered in other jurisdictions around the world.

 

Decision:

Protection in Singapore is conferred on the Application Mark in respect of the restricted specification of goods in Classes 9, 14 and 18.

Principal Assistant Registrar’s response to the arguments put forward by the Applicant

1. The Application Mark should not be characterised as a repeating pattern

a) As observed in the UKIPO’s Manual (of trade mark practice) and the EUIPO Guidelines, although patterns may be represented in the form of square or rectangular labels, they should still be assessed as if they covered the entire surface of the goods for which protection is sought.

b) Other types of IP such as Registered Design and Copyright are available to protect a pattern.

 

2. The Application Mark is inherently technically distinctive

a) The Singapore Trade Marks Registry has not issued any guidelines for the examination of patter marks.

b) The Principal Assistant Registrar agreed with the Examiner that whilst each of the devices in the pattern may be distinctive, the repetition of such distinctive marks does not equate to the resulting pattern being also inherently distinctive.

c) Bearing in mind the function of a trade mark is for consumers to identify the source of the goods or services, the UKIPO Manual’s provision that pattern marks that are “fanciful, unusual and/or arbitrary, [or] departs from the norm or customs of the sector” can be inherently distinctive may be applicable for goods and services which do not normally bear any patterns at all.

d) The lack of evidence of use filed by the Applicant meant it was left to the Principal Assistant Registrar to decide if the Application Mark “departs from the norm or customs of the sector” proceeding on the basis of the “hypothetical average consumer” of the relevant goods or services

 

3. The Application Mark is comparable to other pattern marks which have been accepted for registration in Singapore

a) The precedent registered pattern marks relied on by the Applicant contained the respective proprietors’ monogram.
b) The Applicant did not provide precedents of pattern marks that had been rejected.

4. The Application Mark has been successfully registered in other jurisdictions around the world.

a) Relevant laws and practices in different jurisdictions differ.
b) It is not known what were the submissions put forward and evidence adduced before the Registries in these jurisdictions.
c) Cultural differences in various jurisdictions may point to certain types of patterns being common in some jurisdictions but not others.
d) The outcome in the various jurisdictions were not consistent with some jurisdictions including the statement “partial provision refusal for protection.

e) While in the EU, Hong Kong and New Zealand, the Applicant obtained registration for nearly identical goods, in the UK, the goods registration was conferred on was greatly restricted (particularly Class 9 and 14).

f) In Canada and US the applications are still pending

 

Points of Interest

a) Allowing the Application Mark to proceed to registration without having the benefit of evidence or arguments from a contrary viewpoint, “is a feature, not a flaw, of the trade mark examination process”. A third party who objects to the registration of the Application Mark may file an opposition and “put forward some other evidence or arguments”.

 

b) This does not mean that a trade mark examiner should not be vigilant when assessing if a trade mark application should proceed to registration. Ultimately, trade mark examiners must strike a balance between safeguarding the integrity of the trade mark register by disallowing registrations of applications without merit and not being overly pedantic in the examination of trade mark applications.