Clifford Gouldson Lawyers

Louis Vuitton Trade Mark: Not Famous Enough!

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In a shock decision by the Federal Court of Australia, Judge Jessup has found that a trade mark owner will have to be even more famous than Louis Vuitton before it can successfully rely on its reputation in a trade mark infringement dispute!
In the recent case of Louis Vuitton Malletier -v- Sonya Valentine Pty Ltd the court had to consider the circumstances where reputation in a registered trade mark could be considered in determining whether or not that trade mark was deceptively similar to another potentially infringing mark.  In this case Louis Vuitton alleged that Sonya Valentine Pty Ltd had infringed its trade marks by importing into Australia and selling sunglasses bearing the mark “Louis V” and this symbol:

In addition to the use of this symbol in conjunction with the mark “Louis V”, a small number of sunglasses sold by Sonya Valentine Pty Ltd bore the expression “Eyewear Est. 1941 Paris”.  There was no evidence before the court to suggest that there was any connection between Sonya Valentine Pty Ltd and Paris, nor the year 1941.
Louis Vuitton’s relevant registered trade marks were its “Louis Vuitton” mark and its flower symbol as follows:

Louis Vuitton was ultimately successful in obtaining injunctions and monetary damages orders against Sonya Valentine Pty Ltd, as well as obtaining an order for the delivery up of all sunglasses displaying the infringing flower symbol.  The Federal Court also declared that Sonya Valentine Pty Ltd had used the flower symbol as a trade mark and therefore infringed Louis Vuitton’s flower symbol mark.
However, Louis Vuitton was not successful in seeking to prove that the “Louis V” mark was deceptively similar to its own “Louis Vuitton” mark.  Judge Jessup found that in order to consider whether “Louis V” was deceptively similar to “Louis Vuitton” he had to first determine whether Louis Vuitton’s reputation should be taken into account.
Ordinarily, in trade mark infringement cases, reputation in a trade mark has no bearing on whether the trade mark is deceptively similar to another mark.  However, in rare cases where the trade mark is “notoriously so ubiquitous and of such longstanding that consumers must generally be taken to be familiar with it and with its use in relation to particular goods or services”, it can be taken into account.  This principle has been confirmed in the case of C A Henschke & Co -v- Rosemount Estates Pty Ltd (2000).
His Honour accepted that Louis Vuitton had an established reputation in relation to sunglasses but did not think that its reputation reached and crossed the high bar set in Henschke.  For this reason His Honour did not take into account the reputation in the Louis Vuitton trade mark and as a result held that the “Louis V” mark was not deceptively similar to the “Louis Vuitton” mark.
This is yet another case in a line of decisions from Australian courts that shows how difficult it is to establish trade mark infringement even where a number of letters or words contained within a registered trade mark are consumed within a competing or different trade mark.
However, Louis Vuitton also claimed that Sonya Valentine Pty Ltd had engaged in misleading and deceptive conduct in breach of the Australian Consumer Law (formerly the Trade Practices Act). 
Louis Vuitton also alleged Sonya Valentine Pty Ltd had made false or misleading representations in breach of the Australian Consumer Law.  The court held that due to Louis Vuitton’s reputation a consumer would be misled into thinking that Louis Vuitton was associated with the sunglasses marked “Louis V” and/or the flower symbol.  Therefore Sonya Valentine Pty Ltd’s use of “Louis V” and the flower symbol was held to be a misleading representation that its sunglasses had Louis Vuitton’s sponsorship or approval. 
The court also found that representations by Sonya Valentine Pty Ltd in relation to the sunglasses marked “Eyewear Est. 1941 Paris” were false, because there was no evidence that the sunglasses (which were made in China) were connected to Paris in any way, or the year 1941. 
It was clear that in finding that there had been misleading and deceptive conduct or false or misleading representations, that part of the reputation of Louis Vuitton was linked to its long registered trade marks.
Lessons to be learned include that if you are going to seek to enforce your trade marks it is important to consider additional causes of action under the Australian Consumer Law as a fallback in the event the court determines that the trade marks are not deceptively similar.

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