Icon of style under legal protection – Louis Vuitton won the court battle over the Damier Canvas trademark

Distinguishing luxury goods is not only a matter of taste, but also of brand attributes which are protected by intellectual property law. We present a case study of the lawsuit conducted for the Louis Vuitton fashion house.

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 as part of the exclusive right revocation procedure.

Fashion brands, especially those operating in the luxury goods sector, are particularly vulnerable to this type of action. 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.

The case of the Damier Canvas trademark, belonging to Louis Vuitton, 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.

The dispute began in 2017 with a revocation request regarding international trademark Damier Canvas, legally protected in Poland. After the Polish Patent Office (“PPO” or “UPRP”) initially granted the request, the decision was successfully appealed to the Voivodeship Administrative Court (“WSA”). The court of first instance (WSA) 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. The annulment of the PPO’s decision 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.

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 its judgment of 24 January 2023 (case file no. II GSK 676/20).

In the course of the proceedings before the administrative courts of both instances, it was necessary to demonstrate 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 this position, and the case returned to the Polish Patent Office with clear guidelines concerning retrial proceedings.

Finally, 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 (decision in case file no. Sp.41.2024) confirmed that the graphic sign Damier Canvas, one of the most recognizable symbols of the Louis Vuitton brand, possesses primary distinctiveness, that is, already at the date of filing the 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 the Damier Canvas trademark, referred in detail to a number of errors 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 a 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 matter 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 registration application was filed, 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 the 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 PPO. 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 a different body of evidence and considered under a different legal system, relating to designations protected under a procedure other than the national one, 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 Louis Vuitton, conclusively confirming that the trademark possesses primary distinctiveness and meets the statutory conditions for protection.

What distinguishes this case on an international scale is its outcome. In the majority of other jurisdictions, the protection right of the Damier Canvas trademark has been revoked or could be maintained only by demonstrating acquired distinctiveness.

Disclaimer: The author of this article, attorney-at-law Dorota Rzążewska, acted as counsel for the trademark owner (Louis Vuitton) in the proceedings described herein. The case was conducted in cooperation with attorney-at-law Iwona Jowik of Copernic Avocats.

This article constitutes the author’s adaptation of a Polish-language article previously published in the daily newspaper Rzeczpospolita (19 December 2025).