First published on The Trademark Lawyer Magazine.
On 29 November 2018, luxury fashion house Louis Vuitton successfully defended the iconic LV trademark in invalidity proceedings and opposition proceedings. The brand equity of a trademark can be highly lucrative for a brand. Robust action should be taken to protect the goodwill generated from a trademark portfolio as part of the wider brand management strategy.
Invalidity and opposition proceedings
Louis Vuitton opposed the registration of the figurative mark for LV Power Energy Drink (“contested mark”). Bee-Fee Group Ltd (intervener) had applied to register the contested mark in relation to goods and services under Nice Classes 32, 35 and 43. The contested mark was registered under trademark number 12898219 in October 2014. Louis Vuitton filed an application with the European Union Intellectual Property Office (“EUIPO”) seeking the contested mark to be declared invalid for all goods and services in the above Nice Classes in March 2015.
In March 2015, Louis Vuitton also filed a notice of opposition but this time in relation to the application by Fulia Trading Ltd (intervener) to register the figurative mark LV BET ZAK.ADY BUKMACHERSKIE under Nice Classes 28, 35 and 41.
The invalidity and opposition proceedings were brought against the backdrop of the successful registration by the French fashion label of the figurative mark LV (“earlier trademark”) on 11 November 1997. The earlier trademark is synonymous with luxury, exclusivity and affluence and the Monogram canvas comprising of the earlier trademark and floral motifs is arguably timeless and chic.
The earlier trademark is registered under number 15628 for goods under Nice Classes 16, 18 and 25. Notably, the Nice Classes that the contested mark and the earlier trademark are registered under do not overlap. However, Louis Vuitton’s two-pronged approach to challenge the validity of the contested mark was to:
- focus on goods in Nice Classes 18 and 25; and
- rely on the reputation of the earlier trademark within the EU in relation to those goods.
Louis Vuitton’s application for the contested mark to be declared invalid was rejected by the Cancellation Division of the EUIPO and the subsequent appeal was dismissed by the Board of Appeal (“Board”). Conversely, Louis Vuitton was initially successfully before the Opposition Board. However, Fulia was successful on appeal and the Board annulled the decision of the Opposition Division on three main grounds which apply to both cases; namely:
- the goods and services in question were dissimilar which would remove the risk of likelihood of confusion as to origin;
- the marks were dissimilar for the goods and services in question and even if there was a degree of similarity between the marks it was a very low degree of similarity; and
- it had not been established that the earlier trademark was known by a significant part of the general public in relation to the goods at issue (bags and clothes).
In both cases, Louis Vuitton appealed to the General Court and sought relief in the form of:
- annulment of the contested decision; and
- an order for the EUIPO and intervener to pay their own costs as well as Louis Vuitton’s legal costs.
The General Court (the “Court”) identified the twin aims of a trademark which are to indicate the origin of goods and services and a means of conveying messages such as the qualities or characteristics that are unique to the goods and services which it covers. The Court distinguished between the intrinsic brand value of a trademark and the goods and services for which it is registered. The economic value of a trademark is heightened if it has a reputation thus deserving legal protection. The earlier reputation of the trademark is often the result of considerable effort and investment of the trademark proprietor to elevate the brand, and the underlying objectives of intellectual property law is to protect, enforce and promote creativity and innovation.
Article 8(5) of Regulation No 207/2009 (now Regulation 2017/1001) was relied upon inter alia by Louis Vuitton and requires the earlier trademark to (i) be registered; (ii) be identical or similar to the mark being applied for; iii) have a reputation within the EU if it is an EU trademark; and iv) be used in a way that would lead to the risk that it might be detrimental to the distinctive character or repute of the earlier trademark
- The assessment to be undertaken to ascertain whether unfair advantage has been taken of the distinctive character or repute of an earlier trademark (i.e. free-riding) is to consider the average consumers of the goods and services for which the later mark is registered. The average customer is deemed to be reasonably well informed, reasonably observant and circumspect.
- The fact that the Board is not bound by the decisions of national courts does not mean the national decisions are not relevant in determining whether an earlier trademark has a reputation. Previous decisions should be taken into account and reviewed with especial care to determine whether future cases should be decided the same way.
- In these cases, the Board should have provided an explicit statement for departing from previous decisions as to the reputation of the earlier trademark because it reached its decision in part by relying on those previous decisions.
- In the global assessment of whether there is a risk of likelihood of confusion, the perception of the marks by the average consumer of the goods and services in question plays a pivotal role. Does the average consumer consider the two marks to be at least partially identical as regards one or more relevant aspects, namely, the visual, phonetic and conceptual aspects?
- Submitting evidence to prove the reputation of an earlier trademark from Wikipedia is likely to be rejected as the online encyclopedia can be amended at any time and even anonymously by visitors which undermines the probative value of the evidence.
- Article 8(5) of Regulation No 207/2009 affords protection to proprietors of trademarks with a reputation where there is not a likelihood of confusion on the part of the relevant public as to the goods and services covered by the mark applied for and those for which the earlier mark with a reputation has been registered.
- Ultimately, a trademark with a reputation performs the primary function of a trademark which is to be an indicator of origin because it is known by a significant part of the relevant public in relation to the goods or services it covers.