Louis Vuitton successful against knock-off trade mark

Famous trade marks are often not only the target of product pirates but also of applicants who try to push the boundaries and find the ‘blind spot’ of trade mark law where their sign is sufficiently similar to evoke a famous trade mark but not similar enough to fall in its scope of protection. In rare cases, this strategy is successful. In this sense, one could recall that the General Court confirmed that this sign

does not infringe the Volkswagen logo

 even though it looks rather similar when turning it upside down (case T-623/16):

Fortunately, such decisions are exceptions and most of the time trade mark offices and courts see through the attempt to take advantage of a trade mark with a reputation, as in the following case involving Louis Vuitton’s famous Monogram mark.

Background

On 12 September 2020, an individual residing in Rome (‘Trade Mark Owner’) filed EU trade mark no. 018306124 for the following sign covering goods in classes 25 and 26, including various types of clothing and accessories for apparel. 

Louis Vuitton filed an opposition (no. 003133780) based on earlier trade marks for the so called ‘Monogram’: 

Louis Vuitton argued a likelihood of confusion (Art. 8(1)(b) EUTMR) and infringement of its trade mark with a reputation (Art. 8(5) EUTMR).

On 14 January 2022, the Opposition Division of the European Union Intellectual Property Office (‘EUIPO’) rejected the opposition on the basis of a likelihood of confusion (decision here) because of the very low degree of visual and aural similarity of the signs. Louis Vuitton had not submitted evidence of reputation of its trade mark. The decision became final.

On 15 November 2022, Louis Vuitton filed an invalidity application against the abovementioned trade mark on the basis of its earlier EU trade mark no. 000015628, International Registration designating the EU no. 1127687 and French trade mark no. 3873608, all for the figurative mark 

 

 

and covering bags, clothing articles and/or accessories for apparel.

Louis Vuitton argued (again) a likelihood of confusion and that the contested trade mark would infringe its rights to a trade mark with a reputation.

The EUIPO’s decision

Louis Vuitton was successful this time (decision here).

No res judicata

The Trade Mark Owner argued that the decision in the opposition proceedings between the parties constituted res judicata (Art. 63(3) EUTMR). The EUIPO rejected this argument by referring to consistent case law, according to which a decision in opposition proceedings does not preclude an invalidity application based on earlier rights.

The EUIPO also held that the lack of evidence of reputation in the opposition proceedings resulted in these proceedings not being decided on the merits with respect to Art. 8(5) EUTMR. This prevented the principle of res judicata from applying.

Genuine use

The Trade Mark Owner requested Louis Vuitton to provide evidence of use for its Monogram marks. Louis Vuitton submitted a large amount of documents, sufficient to convince the EUIPO that the earlier marks had been used genuinely for ‘trunks, travelling bags, bags, handbag’ in class 18 and ‘clothing articles for women’ in class 25. The use of the sign in the ‘Monogram Canvas’ was also considered to constitute genuine use:

The Cancellation Division found that the earlier marks were not lost in the overall impression produced by the various elements of the pattern but could be perceived separately.

Reputation

Turning to the requirements of Art. 8(5) EUTMR and considering the vast amount of evidence submitted by Louis Vuitton, the Cancellation Division found that the Monogram enjoyed a reputation for ‘trunks, travelling bags, bags, handbag’ in class 18 and ‘clothing articles for women’ in class 25.

Similarity of signs

The EUIPO held that the elements in the earlier and the later signs are equally distinctive and dominant. On that basis, it confirmed the very low degree of visual and phonetic similarity between the signs that was found in the opposition proceedings. A conceptual comparison was not possible due to a lack of meaning of either sign.

Link

In assessing the requirement of a link between the marks, the Cancellation Division paid particular attention to the proximity of the goods in question.

Parts of clothing, footwear and headgear in class 25 of the contested trade mark were found to be either identical or closely linked to Louis Vuitton’s reputed clothing articles for women. They serve the same purpose (cover and protect various parts of the human body against the elements), are articles of fashion with complementary design, often found in the same retail outlets and have the same manufacturers and designers.

The goods in class 26 of the contested trade mark may be decorative (such as charms, hair ornaments and hair fastening articles) and/or functional (such as buttons, shoe fasteners and strap buckles). These accessories may improve or complement the reputed clothing articles for women.

The EUIPO considered some similarity between Louis Vuitton’s leather goods in class 18 and ‘sewing articles and decorative textile articles’ of the contested trade mark. They are all accessories or pieces used for the creation of leather goods. The stitching created with sewing articles not only holds the goods together but also adds aesthetic value and durability to the finished item.

The Cancellation Division even found a link between ‘needles and pins for entomology’ [entomology = the study of insects] and Louis Vuitton’s leather goods in class 18. It held that a designer might draw inspiration from entomology, incorporating insect motifs or even actual pinned insects into the design of bags, creating a unique and perhaps edgy appeal.

Based on an overall assessment of the relevant factors (including the strong reputation of the Monogram) the Cancellation Division found that the relevant public would establish a link between the marks.

Unfair advantage

The EUIPO agreed with Louis Vuitton’s contention that the contested trade mark takes unfair advantage of the Monogram. The similarity of the Trade Mark Owner’s sign with Louis Vuitton’s trade mark attracts more consumers to the Trade Mark Owner’s goods. The goods benefit from the reputation of the earlier trade marks for luxury, glamour, exclusivity and quality, thereby misappropriating their power of attraction and advertising value.

Due cause

The Trade Mark Owner claimed to have due cause for using the contested mark because its clearance search did not reveal identical or similar trade marks and the contested trade mark was inspired by the famous Italian Piazza Vittorio. Both arguments were not considered sufficient reasons to justify the exploitation of the distinctiveness and reputation of Louis Vuitton’s trade marks.

Comment

1. The decision shows the benefits and need of relying on the reputation of a trade mark and not just on a likelihood of confusion.

Signs may not be similar enough to create a likelihood of confusion but they may have sufficient similarities for the public to establish a link between them.

Further, Art. 8(5) EUTMR does not require the goods and services to be similar. However, some relatedness of the goods and services is required, even though Art. 8(5) EUTMR states that it applies irrespective of their similarity. If the goods and services are entirely different, case law considers it unlikely that consumers will establish the necessary link between the trade marks (see e.g. recently a case involving the ‘PUMA’ figurative mark reputed for clothing on the one hand and goods for the baking industry on the other, case T-184/23 at paras. 53 et seqq.).

2. The EUIPO’s decision is less convincing on its contention that Art. 63(3) EUTMR did not apply because Louis Vuitton relied on Art. 8(5) EUTMR in the opposition proceedings but did not submit evidence on the reputation of its trade mark.

First, the wording of Art. 63(3) EUTMR suggests that it only applies to situations of two successive invalidity applications. It would be contrary to settled case law to apply it to the situation in the case discussed above where the first action was an opposition and the second an invalidity application.

Second, even if the first decision were rendered in invalidity proceedings, the fact that Louis Vuitton did not submit evidence on reputation but nevertheless pleaded Art. 8(5) EUTMR would lead to a rejection of this claim in the first decision. A trade mark owner who submitted no evidence on reputation should not be better off than an owner who submitted insufficient evidence.

The EUIPO’s reasoning would also be difficult to align with Art. 60(4) EUTMR, providing that a second invalidity application may not be brought on the basis of another earlier right that could have been invoked in the first invalidity proceedings. If one cannot even invoke a different trade mark, one should also not be entitled to invoke the same trade mark but a different plea in law.