as an EU trademark in 1988. However, Nanu Nana, a German chain store, challenged the registration based on descriptiveness and on the fact that the mark was «devoid of any distinctive character.»156The Cancellation Division declared the mark invalid in 2011 and found «that pattern was one of the most basic patterns used as a decorative element, and as such the relevant public would see it as merely a decorative feature and not as a sign indicating the origin of the goods in question and that, in any event, the contested trade mark did not depart significantly from the norms or customs of the sector.»157Louis Vuitton filed a notice of appeal in 2011, which was dismissed by the First Board of Appeal of the EUIPO. The Board further iterated that the checkerboard pattern «was a basic and ba-nal feature composed of very simple elements and that it was well-known that that feature had been commonly used with a decorative purpose in relation to various goods.»158 The Board additionally found that «in the absence of features capable of distinguishing it from other representa-tions of chequerboards, [the pattern] was not capable of fulfilling the es-sential‹identification›or‹origin›function of a trade mark.»159In 2015, the General Court of the EU again held that the Damier mark lacked in-herent distinctive character and that the evidence provided by Louis Vuit-ton, notably photos of celebrities carrying bags with the pattern, was not enough to prove well-known distinctiveness through use.160
D. Bottega Veneta: The (Legal) (Hi)Story of the Intrecciato Pattern
Established in 1966 in Vicenza, Italy, Bottega Veneta was initially formed by two entrepreneurs, Michele Taddei and Renzo Zengiaro. Bottega Ve-neta («Venetian Shop» in Italian) was founded as an artisanal leather goods producer and created the distinctive leather design, intrecciato, in the late 1960 s.161 Intrecciato is unique in that it requires super fine
156 Case T–237/10,Vuitton Malletier v. OHIM (Trade Marks and Designs), 2011 II-00449.
157Id.
158 Case T-359/12,Vuitton Malletier v. OHIM (Trade Marks and Designs), 2015.
159Id.
160Id.
161 MEGSMAHONEYDUSIL, History of Intrecciato from Bottega Venata, Purse Blog, Aug.
leather to get under the needle of the specialized sewing machines that Bottega Veneta made to produce its goods.162 Even though the leather used to create the goods is so fine, the purpose of the manufacturing method is to create a more durable material for leather accessories.163 Widely associated with Bottega Veneta, this weave design was the starting point for the brand’s evolution and is still one of the most recognizable elements of the brand.164Over the next decade, Bottega Veneta started to use the tagline «when your own initials are enough,» a nod to the com-pany’s common abbreviation to just its initials, BV. Indeed, the Bottega Veneta initials seemed to catch on, with the brand becoming a go-to acces-sory for the jet set crowd by the early 1980 s. This clientele included such notable figures as former first lady Jacqueline Kennedy Onassis and Em-press Farah Pahlavi.165Even prominent artists took notice of the brand, with Andy Warhol making a short film for the brand in 1980.166
After this boom for the brand, the mid and late 1980 s into the 1990 s saw fortunes declining for Bottega Veneta. Encouraged by the now famous name, the company began to emblazon a «BV» logo on its popular bags.
By 2001, the company was sold to the Gucci group for $156 million.167 Gucci’s creative director at the time,Tom Ford, made the decision to hire Tomas Maier, a German designer, as the Creative Director for Bottega Ve-neta within the first year of the acquisition.168Maier was given total crea-tive control over all aspects of the brand– from the product and store design to overseeing advertising.169With this power, Maier worked to re-turn the brand back to its original identity; he removed the garish visible logos from products and focused on the signature weave and company’s
4, 2009, available: https://www.purseblog.com/bottega-veneta/history-of-intreccia to-from-bottega-veneta/, accessed on August 22, 2019.
162 Id.
163 Id.
164 DELOITTE, Global Powers of Luxury Goods 2015, 12 Deloitte Touche Tohmatsu Lim-ited (DTTL), (2015).
165 MAIERTOMAS, Bottega Veneta: Art of Collaboration (2012).
166 FASHIONMODELDIRECTORY, Bottega Veneta: History and Brand Profile, available:
http://www.fashionmodeldirectory.com/brands/bottega-veneta/ (2011), accessed on August 22, 2019.
167 JOHNCOLAPINTO, Just Have Less: Bottega Veneta’s Tomas Maier, The New Yorker, Jan. 3, 2011.
168 Id.
169 NICKCOMPTON, Bottega Veneta: The Dream Weavers’Tale, The Telegraph, Mar. 1, 2014.
artisanal roots.170This move back to the brand’s basics was encouraged by Vogue, calling it a form of «stealth wealth.» Encouraged by the re-newed positive view of the brand, Maier then presented the brand’s first ever woman’s ready-to-wear line in 2005, followed by a men’s line in 2006.171The same year the brand branched into men’s fashion, Bottega Veneta also released jewelry, furniture, and interior design lines.172To sell this new and vastly expanded product line, Bottega Veneta unveiled its first «Maison» in 2013 within a historical building, an 11,000-square foot boutique offering all of the product lines.173Currently, the brand has over 250 boutiques in 43 countries and Thomas Maier celebrated his 15thyear as creative director in 2016, the same year as the brand’s 50-year anniver-sary.174
Bottega Veneta currently holds 179 active trademarks from 26 Intellec-tual Property Offices.175Their trademarks range from the initials they found to be «enough» in their 1970 s slogans, to the intrecciato pattern they claim as unique and distinctive, to the knot adornment present on many of their products, including wallets and perfumes. The weaving pattern, which does not have a logo, the «BV» initials or any other indi-cator that clearly states that it is a Bottega Veneta creation, has been a par-ticularly troublesome trademark for the brand. According to Bottega Veneta, this very specific weave in itself is distinctive and serves as an
in-dication of the source.176However, because the weave is easily made and the Bottega Veneta logo is not present, infringers are constantly copying the intrecciato weave. Unsurprisingly, many trademark examiners are hesitant to register such a mark because of its lack of a logo or easily iden-tifiable and unique characteristics.177Likewise, the knot symbol has run into some trouble as many examiners also find this as hard to distinguish
170 MAIERTOMAS, Bottega Veneta: Art of Collaboration (2012).
171 SARAHMOWER, Fall 2006 Ready-to-Wear Bottega Veneta, Vogue Feb. 20, 2006.
172 VOGUE, Bottega Veneta, Vogue, Nov. 24, 2015.
173 LOUISAZARGANI, Bottega Veneta Unveils Maison in Milan, WWD, Sept. 23, 2013.
174 CAROLINEISSA, Bottega Veneta: 50 Years in the Making, it’s all About the Clothes, The Telegraph, Sept. 28, 2016.
175 WIPO Global Brand Database, available: http://www.wipo.int/branddb/en/#, ac-cessed on August 22, 2019.
176 LISAWAN, Weaving a Trademark, The IP Law Blog, Oct. 28, 2013, available: https://
www.theiplawblog.com/2013/10/articles/copyright-law/weaving-a-trademark/, accessed on August 22, 2019.
177Id.
or generic.178 Still, the U. S. has allowed the registration, although not without some controversy, as indicated below.179France has also allowed the company to register this mark as of 2009.180This registration was sub-sequent to the European Union Intellectual Property Office (EUIPO) registration in 2008.181 The other Bottega Veneta trademark of interest is the knot symbol often adorning the company’s products. Currently the following countries or regions recognize the registration: Kuwait, the U. S., EU, Chile, Indonesia, Singapore, the Philippines, and Austra-lia.182
However, the perplexities over registering a weaving pattern as trade-marks were palpable also in countries that allowed the registration. In the U. S., the mark was registered only after the Trademark Trials and Ap-peals Board (TTAB) ruled that the brandcouldregister a trademark for the specific design, after the examining attorney issued a final rejection on the mark.183 The rejection was based on the grounds that the mark was functional and that the design does not function as a trademark be-cause it is solely ornamental.184On review, the TTAB reversed both the argument that the mark was utilitarian and that the mark was merely or-namental.185The reversal was based on the finding that Bottega Veneta had demonstrated the design had acquired distinctiveness as a trade-mark.186The win in the TTAB signified an upswing for Bottega Veneta, who has continued to file trademark applications on the weave with re-newed vigor. However, the rights granted by the marks are limited to
«identical or nearly identical» designs comprising the elements listed in the applicant’s mark description. This excludes products that have hor-izontal weaves (as opposed to the diagonally situated intrecciato weave), products with a weave made out of a material that is not leather
(includ-178 Id.
179 The mark consists of the woven leather pattern, Registration No. 4527371 (U. S.).
180 The mark consists of the woven leather pattern, Registration No. 3685850 (France).
181 The mark consists of the woven leather pattern, Registration No. 006632905 (EUI-PO).
182 The mark consists of a knot, Registration Nos. 147923 (Kuwait), 012537081 (EUI-PO), 86170650 (U. S.), D002014000894 (Indonesia), 2013063939 (Myanmar), T1407169D (Singapore), 1201398 (Philippines), 1621397 (Australia), and 1201398
(Chile).
183 In re Bottega Veneta Int’l S. A. R. L., 2013 WL 5655822 (TTAB 2013).
184 Id. at 1.
185 Id. at 2.
186 Id. at 13.
ing materials that simulate leather), or with strips that are wider or nar-rower than the Bottega Veneta-prescribed 8 to 12 millimeters.187
Other administrative bodies have also reviewed the Bottega Veneta wo-ven leather and other applications for a three-dimensional trademark.
In the EU, the General Court denied registration to the same three-di-mensional trademark of the leather weaves in the shape of two bags.188 The court upheld two decisions of the Board of Appeals on the matter –one for either of the bag shapes. In this case, the General Court said that the bags did not pass the test for distinctive character. In order to pass, the bags must «deviates significantly…from the standard or customs of the sector and therefore allows the consumer to identify the bag, correspond-ing to the trademark applied for, as originatcorrespond-ing from a particular under-taking and thus to distinguish it from bags produced by other compa-nies.»189 The overall shape of the bags in question was declared only a
«simple variation» of those bags available on the market; there was noth-ing distinctive enough about the product to significantly prove to the court that it could only originate from the Bottega Veneta brand.190While the General Court denied this three-dimensional mark, the court did provide some guidance for future applications. Specifically, this explana-tion expanded on one reason that the three-dimensional mark is so hard to obtain: the average consumer is not in the habit of determining the source or origin of a good or product based only on the shape of that pro-duct.191This is particularly true in situations where there are no logos or brand elements on the product. Curiously, the court did not address the woven element on the surface of the bag.
187 TFL, Bottega Veneta Granted Trademark for Weave Design, The Fashion Law, Oct.
10, 2013, available: http://www.thefashionlaw.com/home/bottega-veneta-granted-trademark-for-weave-design, accessed on August 22, 2019.
188 Joined cases T-409–410/10, Bottega Veneta Int’l v. OHIM, 2013 EURLex 62010TJ0410.
189 Joined cases T-409–410/10, Bottega Veneta Int’l v. OHIM, 2013 EURLex 62010TJ0410.
190Id. at para. 55.
191Id.
V. The Potential Negative Impact of Non-Traditional Trademarks on Creativity and Access to Styles
In this Part, I conclude this Essay and attempt to draw some considera-tions based on the analysis of the examples above. In particular, what are the main takeaways from the analysis of the four examples described –Louboutin, Gucci, Louis Vuitton, and Bottega Veneta? And to what ex-tent the conclusions that we could draw based on these examples illus-trate the issues that relate, in general, to the costs and benefits regarding the legal protection of NTTMs? In this respect, do these examples de-monstrate that the laws protecting products design could be a more ap-propriate alternative for protecting the signs for which protection has been sought, and litigated with variable results, in the cases at issue?
At the outset, I note that all the companies involved in the examples above were very persistent in their attempts to register their colors, patterns, and other product features as trademarks.192Based on these registrations, the companies–so far primarily Louboutin, Louis Vuitton, and Gucci– have strictly enforced their rights and demanded that competitors refrain from using identical and similar colors style and color for shoes soles for Louboutin, and similar patterns for Louis Vuitton, Gucci, and Bottega Veneta.193 In some instances, these demands have been met with
resis-tance, and the companies had to face litigation. In some cases, this litiga-tion concluded unsuccessfully. However, in other cases, the litigalitiga-tion proceedings concluded successfully for the companies leading to a stron-ger recognition of their rights on their NTTMs. Moreover, as I high-lighted in Part III, the litigation proceedings at issue likely represent just a fraction of the actual claims these companies may have made through demand and cease-and-desist letters. Almost certainly, a large number of these letters have met no resistance and the recipients may have imme-diately accepted to cease to produce any products that looked similar. As the data related to the number of letters sent by these (or any other) com-panies are not publicly available and the terms of any out-of-court pro-ceedings remain confidential, it is not possible to assess the actual impact and effect that the legal protection of these NTTMs may have had, and still has, on market competition and competitors’and third parties’ ac-cess to similar style and product features in general.
192 SeediscussioninfraPart III and part IV.
193 Id.
As I supported before, in my view, this result is certainly problematic. As several scholars, including myself, have criticized, protecting and grant-ing exclusive rights on NTTMs may ultimately result in preventgrant-ing ac-cess to competitors and third parties to relevant and aesthetically appeal-ing designs and product features. Even though these product features have been first created by the companies that have applied to register them as trademarks, and thus may have acquired distinctives in a mar-ket-recognition sense, these features remain product designs, which con-tribute to the appearance and style of the overall products. In several in-stances, these marks are the whole product. In other words, the signaling function of these features far exceed that of traditional marks and extends to the likeability, aesthetic, and design of the products to which these fea-tures attach. As a result, granting rights that allow a one company to pre-vent access to these features, potentially in perpetuity through trademark protection, to anyone else translates in granting to that company a poten-tially perpetual monopoly on styles and aesthetic elements that can no longer enter the public domain and be freely copied by competitors and other third parties.
However, the potential damaging effects of NTTMs are not limited to the fact that competitors and others can no longer copy these product design and aesthetic features. As I have supported before, protecting NTTMs could also affect the competitiveness and innovation of the companies that own these trademark registrations in the long term. In particular, granting rights to these companies on their NTTMs could lead to a para-doxical situation where these companies become effectively «trapped»
by these marks (or rather by the design and aesthetic features that are pro-tected as marks) and these companies have to continue using these marks repeatedly without variation, lest they could be accused of using their marks inconsistently and in manners affecting the distinctiveness of the marks.
To exemplify this statement, all the companies in the examples above (and many other companies in the fashion industry and other industries) have built their image–past, present, and to a large extent, their future image– on the characteristic shapes, patterns, and colors they have fought hard to register as NTTMs and later enforced against as many «copiers» as pos-sible.194 For example, a trip to any Louboutin store worldwide, or a search online, reflects the essential value of the red soles for the designer.
194SeediscussioninfraPart III and Part IV.
Every single pair of shoes in these stores, be they for woman or man, now use the famed red soles. A Louboutin shoe would not be a Louboutin without the red sole. A trip to any Louis Vuitton or Gucci store, reading a Louis Vuitton or Gucci catalogue, or a visit to the online retailers selling Louis Vuitton and Gucci products, would prove exactly the same point for Louis Vuitton and Gucci. Their typical patterns are omnipresent in almost the totality of, respectively, Louis Vuitton and Gucci products.
Again, this omnipresence and repetition project the message that a Louis Vuitton or Gucci product would not be a Louis Vuitton Gucci product without the typical monogrammed patterns (sometimes used as a full product trade dress and other times used more discretely). Last, but not least, every single Bottega Veneta product comes as an intrecciato pat-tern product. Thus, while the company has a large line of product and ac-cessories in different colors, the patterns used for these products is al-ways the intrecciato pattern.
This begs the following question. Is this repetitiveness a positive aspect for the development and long-term creativity and innovation of these companies and their designers? Clearly, these companies have to repeat and integrate their NTTMs as part of their design if they want to continue to secure trademark protection. At this time, these companies may be ea-ger to do so, as those designs may drive more consumers to them based on the recognition of the designs and the status that wearing these (exclu-sive and not possible to (legally) copy) designs may mean for the purcha-sers and those seeing the purchapurcha-sers wearing the products after the sale.
Moreover, this repetition and acquired goodwill in those NTTMs con-tinue to drive competitors to copy the desired aesthetic elements, which in turn triggers trademark enforcement on the part of these companies, and to «sanctify» the protected elements as the desirable (but untouch-able) styles of the industry.
Yet, what if the designers of these companies would like to change their products a little and use an adapted version of the patterns and mono-grams because consumers have become bored with that style (also largely copied by counterfeiters)? Or, what if these designers would simply like to create something completely new, or of a different color, or follow a different type of design? At this time, the need for this constant repetition of the same colors, patterns, and style seem to severely limits designers’
creativity as every shoe, bag, and any other product designed by these companies would need to carry the characteristic colored sole or patterns and stripes. Moreover, the temptation of continuing to extract value from
the same shapes, colors, and patterns protected with NTTMs also has the potential to decrease investments in product quality, at least in the short
the same shapes, colors, and patterns protected with NTTMs also has the potential to decrease investments in product quality, at least in the short