Louis Vuitton Malletier v Sonya Valentine Pty Ltd [2013] FCA 933

This case confirms that reputation in a mark will not be relevant to the test for deceptive similarity unless the mark is so notorious and ubiquitous, and of such long standing, that consumers generally must be taken to be familiar with it. 

The parties - Louis Vuitton Malletier and Sonya Valentine Pty Ltd

The Applicant, Louis Vuitton Malletier is a well-known French company which sells luxury goods including sunglasses. It is the owner of the following Australian registered trade marks:

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The Respondent, Sonya Valentine Pty Ltd, is an importer and distributor of goods sourced in China. In 2012, Sonya Valentine received a shipment of glasses which bore a LOUIS V mark and a flower symbol (below), and it offered for sale and sold the sunglasses to retailers in Australia. 

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Alleged infringement

Louis Vuitton alleged infringement of its registered trade marks in contravention of s120 and, in particular, claimed that:

  1. LOUIS V is deceptively similar to LOUIS VUITTON;
  2. the flower symbol on the sunglasses is deceptively similar to the Flower Device. Louis Vuitton also alleged that by trading in sunglasses marked with these trade marks and the words “Est. 1941 Paris”, Sonya Valentine engaged in misleading or deceptive conduct in contravention of the ACL.

Decision

In relation to the trade mark infringement allegations, Jessup J had little doubt that on a visual comparison the flower symbol shown on the side of the sunglasses was deceptively similar to, and infringed, the registered Flower Device.

However, with respect to the LOUIS V mark, Jessup J held that, ignoring initially the Applicant’s reputation, the mark was not deceptively similar to LOUIS VUITTON. Taking each mark as a whole, and comparing the imperfect recollection a consumer would have of the LOUIS VUITTON mark on one hand, with the impression that a person would have from LOUIS V on the other, he was not persuaded a person would be deceived into making an association between the two. Jessup J was of the view that even a person who was aware of the LOUIS VUITTON mark would not necessarily think that the “V” was a reference to “Vuitton”.

His Honour confirmed the view in C A Henschke & Co v Rosemount Estates Pty Ltd (Hill of Grace case) that a trader’s reputation can be relevant to the consideration of deceptive similarity but, that the test is not the kind of inquiry that might be undertaken for a passing off or contravention of the ACL claim. The reputation must be such that the mark is so notorious and ubiquitous, and is of such long standing, that consumers generally must be taken to be familiar with the mark and with its use in relation to particular goods. 

His Honour did not accept that Louis Vuitton had established a reputation in sunglasses which satisfied this higher test. Therefore, the LOUIS V mark was not deceptively similar to the Applicant’s LOUIS VUITTON mark and did not infringe the registered LOUIS VUITTON mark.

On a consideration of a contravention of the ACL, Jessup J held that, given Louis Vuitton’s reputation with respect to fashion goods, including sunglasses, a consumer would be misled into thinking that sunglasses marked with a combination of LOUIS V, the flower symbol and words “Est. 1941 Paris”, were either sunglasses of the Applicant or were associated with the Applicant. 

Conclusions

This case confirms that when considering deceptive similarity, reputation can be relevant but only if the reputation of a mark is notoriously so ubiquitous and of such long standing that consumers generally must be taken to be familiar with it. Otherwise, the test of deceptive similarity that is applied will not differ irrespective of whether the infringed mark is newly registered or has been prominently displayed for many years.