A trademark does not always have to be "loud". Sometimes it's enough that it discreetly says "that's us". Distinguishing luxury goods is not only a matter of taste or recognizability, but also of brand attributes which are protected by intellectual property law. The case study of the lawsuit won for the Louis Vuitton fashion house demonstrates how undertaken precise legal measures and an excellent knowledge of administrative procedures translate into effective action.
Although the registration of a trademark constitutes a formal confirmation of an exclusive right, it does not guarantee that the effective acquisition of this mark could not be challenged. Under applicable regulations, any interested party may challenge the validity of the mark, both at the opposition stage and as part of the exclusive right revocation procedure. In practice, this often involves many years of administrative or court proceedings, which requires significant expenditures as regards evidence collection, time and financial resources.
Fashion brands, especially those operating in the luxury goods sector, are particularly vulnerable to this type of action. High recognizability, marketing significance of trademarks and their economic value mean that any challenge to protection rights may have serious consequences for a business. All the more so if the subject of the dispute is a sign whose capacity to perform the function of a trademark is contested and whose lack of primary distinctiveness at the time of filing a registration application is alleged.
An example of such a dispute is the case of the Damier Canvas trademark, belonging to Louis Vuitton, well-known to both consumers and unfair competition. This court case shows how important and non-obvious the legal settlement of the issue of the original distinctiveness may be in cases where marks are something between graphic signs and ornaments.
What kind of challenge we faced?
Although the case concerned a graphic trademark, not only factual but also procedural issues turned out to be crucial. The annulment of the Polish Patent Office's decision by administrative courts was possible owing to a precise analysis of the legal grounds invoked in the trademark revocation request filed by the opposing party and the manner in which the proceedings were conducted.
The dispute began in 2017 with a revocation request regarding international trademark Damier Canvas, legally protected in Poland. After the Polish Patent Office initially granted the request, our team successfully appealed the decision to the Voivodeship Administrative Court (WSA). The court of first instance overturned the Patent Office's decision on the grounds that it was issued in violation of the procedural provisions regarding the adversarial character of the proceedings and the assessment of the evidence collected. Cassation appeals against the ruling of the Voivodeship Administrative Court were filed by both the Polish Patent Office and the other party (the requesting party). The case was again resolved by the Supreme Administrative Court (NSA) in our favour.
In the course of the proceedings before the administrative courts of both instances, our role was to prove that the decision had been issued in violation of the substantive provisions indicated in the trademark revocation request, with the failure to consider all the evidence material collected in the course of the proceedings and its incorrect assessment, as well as the Office's failure to comply with the adversarial principles of the proceedings consisting in maintaining the procedural balance between the parties.
The courts of both instances agreed with our position, and the case returned to the Polish Patent Office with clear guidelines concerning retrial proceedings.
What have we achieved?
After years of litigation and administrative court proceedings the dispute over one of the iconic marks in the world of luxury fashion ended successfully for its holder. By rejecting the trademark revocation request, the Polish Patent Office confirmed that the graphic sign Damier Canvas, one of the most recognizable symbols of the Louis Vuitton brand, possess primary distinctiveness, that is, already at the date of filing registration application, this sign had an abstract and specific capacity to distinguish goods, and therefore could function as a trademark.
The Supreme Administrative Court, in the justification for the decision regarding Damier Canvas trademark, referred in detail to a number of infringements committed by the Polish Patent Office while examining the case and formulated clear guidelines to be taken into account when reassessing the distinctiveness of the applied sign.
First of all, the court emphasized that the proceedings concerning revocation of trademark protection right are adversarial proceedings, which in practice should mean that two parties are conducting litigation before the Adjudicative Board, whose role is not to search for evidence or arguments in favour of the legitimacy of the position of either party, to provide guidance on the manner of conducting the proceedings, including evidence proceedings, or to provide guidance on the substantive grounds of the request.
The courts of both instances confirmed that the parties to the dispute are its hosts. They provide arguments and evidence in support of their position, and the requesting party is under obligation to indicate the legal grounds for the request. The Adjudicative Board is bound by the legal grounds of the request indicated by the requesting party, because they set the boundaries within which a given party is considered. Failure by the authority reviewing the case to comply with the principle of the adversarial nature of the proceedings constitutes a procedural deficiency as it does not ensure equal treatment of the parties.
Secondly, when requesting revocation of a trademark in its entirety, the assessment of distinctiveness must concern the full range of goods and services for which the trademark has been filed a registration application for, and not only some of them, as was the case at the first examination of the present case by the Patent Office and limiting it mainly to luxury handbags. Such an approach leads to a distortion of the assessment of the nature of the designation and the function it may perform, which is inconsistent with the requirements of the statute law.
Thirdly, the date of filing of the trademark application is crucial for the assessment of its primary distinctiveness. This means that later circumstances, such as a change in sales strategy, marketing campaigns, brand positioning or the way products are offered (e.g. as luxury products in shopping malls), cannot affect the assessment of this premise.
Fourthly, the court challenged the use of one common model of "average Polish consumer" for all goods covered by the application by the Polish Patent Office. Different consumer models may apply to different categories of goods, and each such group should be analysed separately, taking into account the specificity of a given market and goods.
The Supreme Administrative Court unequivocally stated that in the proceedings concerning revocation of trademark protection right, the question of its actual use is not the subject of assessment. In other words, it does not matter whether the trademark has been used or not because in this case only its primary distinctiveness at the date of registration application filing is assessed. Any attempts to question the primary distinctiveness of the trademark, based on the allegation of non-use of the trademark or the method of applying it to goods covered by the list of goods, are unfounded in the proceedings concerning revocation of the protection right.
Another important element indicated by the court was that the prevalence of counterfeiting of a given sign may speak in favour of its distinctiveness, both primary and secondary. This phenomenon may indicate that the trademark has already been embedded in the consciousness of consumers as an indication of the origin of the goods, and not only as a decorative motif.
Finally, the Supreme Administrative Court also referred to the practice of Polish Patent Office of automatically referring to EU case law, including the ruling in case T-359/12, and recognizing that the facts and legal assessment presented in other proceedings have an impact on the outcome of the dispute conducted by the UPRP. The Court emphasized that although the judgments of the Court of Justice of the European Union may be helpful in interpreting the provisions, their application must be adapted to the specific factual and legal situation of a given case in other states. Uncritically copying conclusions from different lawsuits, which were based on different body of evidence and considered in a different legal system, relating to designations protected under the procedure other than national, is not allowed.
The NSA guidelines became the basis for further proceedings before the Polish Patent Office, which in 2025 issued a ruling in favour of LV, in which it conclusively confirmed that the trademark possess primary distinctiveness and meets the statutory conditions for protection.
What makes this court case unique both in Poland and on a global scale?
What distinguishes this case on an international scale is its outcome. In majority of other jurisdictions, protection right of Damier Canvas trademark has been revoked or could be maintained only by demonstrating their acquisition of secondary distinctiveness, that is, recognizability gained through long-term and intensive use of the sign on the market, that resulted in creating associations between goods whose trademark is intended to be marked with the source of their origin by potential buyers. .
In the course of the proceedings, despite the allegations, we managed to demonstrate that the Damier Canvas trademark was used only by LV. The requesting party did not submit evidence proving that there were other entities using this designation on the market at the date of application filing. Attempts to submit similar signs were ineffective, because the provision clearly states that protection right cannot be obtained for a sign that is used in fair practices by other market actors. Similarly, attempts to argue that the trademark does not possess the primary distinctiveness, as it informs about the quality or other characteristics of the goods for which it is registered, were unsuccessful. Citing this condition required the requesting party to indicate a specific characteristic of the goods identified by the contested sign, which the requesting party was unable to demonstrate.
This court case is multidimensional – on the one hand, it concerns the well-known trademark identifying the goods of the luxury company LV, with a strong presence on the market, and on the other hand, in Poland, with the use of an appropriate procedural strategy and argumentation, it was possible to effectively refute the allegations of the lack of primary distinctiveness of this sign, which was not achieved in the course of proceedings in other countries where this trademark enjoyed protection rights, including trademarks protected under the EU law. The justifications for the rulings issued by the administrative courts of both instances also provide interpretative guidelines both in the field of interpretation and application of the provisions of substantive law and the provisions of procedural law. It is also one of the few lawsuits in the course of which there has been a substantive debate about the adversarial nature of the litigation proceedings and the role of the Adjudicative Board before which a dispute is conducted by two parties with contradictory interests regarding ruling. This court case is an interesting point of reference in the jurisprudence concerning the assessment of the original distinctive character of trademarks.
Key findings for fashion brands
The Damier Canvas trademark case shows that:
- Graphic designations of fashion brands can effectively serve as trademarks, even if they are decorative in nature – as long as they are sufficiently distinctive on the filing date. The protection of graphic signs in the fashion sector does not have to be based solely on secondary distinctiveness (i.e. evidence of long-term use on the market).
- Primary distinctiveness of the mark must be assessed by the filing date and not in the light of subsequent market success, marketing activities or perception of the brand as a luxury one. Sales practices, advertising campaigns or display space for goods should not affect the assessment of registration conditions.
- Allegations of descriptiveness, decorativeness or lack of distinctive character must be precise and well documented. The mere popularity of a given motif (e.g. a checker pattern) or its presence in pop culture is not enough if it does not refer to specific goods and market realities at the time of trademark application filing.
- Each category of goods requires a separate assessment in the light of its perception by an average consumer. A single definition of consumer cannot be automatically applied to all goods covered by the application, the approach in this regard must be individualized.
- European Union jurisprudence can be helpful source of reference, but its conclusions cannot be copied uncritically. Each case must be assessed in the context of local realities, collected evidence and regulations in a given state. The fact that legal protection of the trademark has been revoked in another country does not mean that the identical ruling will be issued in Poland.
- A strategic approach to legal proceedings, both in terms of their content and procedure, may decide the successful outcome. Skilful use of loopholes in the opposing party argumentation, accurate and rigorous reference to the evidence and ensuring the procedural balance of the parties are often key elements of the defence of the trademark.
This success was possible thanks to the cooperation with experts from different jurisdictions. We extend our thanks to attorney-at-law Iwona Jowik from Copernic Avocats law firm for her assistance in the project.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
