The Louis Vuitton case: The importance of robust trademark protection in the face of opportunism

The Louis Vuitton case: The importance of robust trademark protection in the face of opportunism

By Lucía Almasqué

On 22 May 2024, EUIPO’s Opposition Division partially upheld the opposition No. B 3197538 filed by Luis Vuitton Malletier against the trademark application “ZV (& design)”, Serial No.1883449, in classes 9, 18 and 25, based on the trademark “LV (& design)”. In other words, it refused the application for all the goods except “cables for electricity; magnets, magnetisers and demagnetisers” in Class 9.

On February 10, 2023, Chuanliang Zhang applied for trademark registration of with the European Union Intellectual Property Office to protect the following products:

Class 9: Navigation, guidance, tracking, targeting and map making devices; apparatus, instruments and cables for electricity; optical devices, enhancers and correctors; scientific research and laboratory apparatus, educational apparatus and simulators; downloadable and recorded content; scientific and laboratory devices for treatment using electricity; measuring, detecting, monitoring and controlling devices; safety, security, protection and signalling devices; diving equipment; information technology and audio-visual, multimedia and photographic devices; magnets, magnetizers and demagnetizers; spectacles; goggles for sports; sunglasses; sunglass temples; lenses for sunglasses; sunglass cords; straps for sunglasses; cases for spectacles and sunglasses; frames for spectacles and sunglasses; chains for spectacles and for sunglasses; covers for sunglasses.

Class 18: Saddlery, whips and apparel for animals; walking sticks; luggage, bags, wallets and other carriers; umbrellas and parasols

Class 25: Clothing; headgear; footwear; parts of clothing, footwear and headgear.

Louis Vuitton Malletier (hereinafter “Louis Vuitton”) and Boardriders IP Holdings, LLC opposed the application.

For its part, Louis Vuitton objected to all the goods in the claimed classes, basing its objection on its well known  trademark ‘LV (& design)’, Reg. No. 15 628 (Classes 18 and 25), 1 1176 007 (Classes 9, 14 and 24), 1 127 687 (Class 9) in the European Union and Reg. No. 447981 (class 18 and 25) and 2 022 000 097 435 (classes 9, 35 and 42) in Italy and in arts. 8 (1)(b)[1] and 8 (5) [2]EUTMR, as it considered that there was a likelihood of confusion in the mind of the consumer public and that it consisted of a clear exploitation of the reputation and good name of its trademark.

Decision of the Opposition Division

The decision was based on the following grounds:

– Overlap in the protection of the goods of the marks: part of the goods claimed by the applied mark and the marks basis of the opposition are identical, while the other part are goods similar to different degrees, coinciding in terms of producer, relevant public and distribution channels. Furthermore, these goods share the same objectives and are mostly complementary and/or substitute goods. This is for classes 9, 18 and 25, with the exception of “cables for electricity; magnets, magnetisers and demagnetisers” in class 9, as they are considered totally different from those of the opposing marks, as they do not share the same public, distribution channels and are not complementary or substitutes.

– Trade mark comparison: it was concluded that there is a likelihood of confusion as they have the same visual structure, typography and overlapping letters. The only difference between the signs is that between the letters L and Z there is an additional horizontal line in the upper left part of the letter Z.

Earlier trade marksContested sign

– Distinctiveness of opposing marks: the distinctive character should be considered normal, as the marks as a whole have no meaning for any of the goods from the perspective of the consuming public in the relevant territories.

– Consumer public: account is taken of the fact that the average consumer rarely has the possibility to compare different brands directly, but must rely on his or her imperfect recollection of the brands. Therefore, the visual perception of the brands in question will generally take place prior to purchase. It is for this reason that it is concluded that there is a likelihood of confusion on the part of the consumer public and the mark applied for is rejected even for goods considered not that similar.

– Reputation of the cited marks: From the evidence provided it can be concluded that the LV mark is positioned in numerous top brand rankings, with extensive marketing efforts and  long-standing market presence of the LV monogram, i.e. its recognition as a leader in the relevant markets. However, it does not appear from the evidence that it enjoys a reputation sufficient to extend their protection beyond the goods in classes 18 and 25, and therefore insuficcient to refuse the applied trademark for “cables for electricity; magnets, magnetisers and demagnetisers”.

Moreover, each brand is aimed at a different type of public. Whereas the contested goods are aimed at a professional public, Louis Vuitton’s trademarks are only well known to the general public. As such, no association will be made between the signs.

Thus, the Opposition Division rejected the opposition based on Art. 8 (5) EUTMR.

In conclusion, the case reflects the importance of a robust and proactive IP enforcement, demonstrating that the reputation of trademarks is built by developing a solid trademark strategy, of which one of the pillars is the defense against infringement and opportunism of third parties. In addition, certain questions are raised in relation to our local concepts. In other words, there is talk of degrees of reputation when the doctrine and jurisprudence of our country have distinguished the well-known trademark from the famous trademark, as well as the flexibility of the speciality principle in relation to the well-known trademarks.

[1] 8 (1)(b)[1] EUTMR: Upon opposition by the proprietor of an earlier trade mark, the trade mark applied for shall not be registered:(b)if, because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected; the likelihood of confusion includes the likelihood of association with the earlier trade mark.

[2] 8 (5) EUTMR: Upon opposition by the proprietor of a registered earlier trade mark within the meaning of paragraph 2, the trade mark applied for shall not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier EU trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned, and where the use without due cause of the trade mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

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