Double V-ictory for Louis Vuitton

The 29th November 2018 was a busy day for the Louis Vuitton Malletier lawyers, who successfully defended the LV trade mark in two matters before the General Court  of the European Communities (sixth chamber). The LV mark (below) is registered in respect of goods in Classes 18 (e.g. Goods made of leather; bags and 25 (e.g. clothing), among other things.

Louis Vuitton Mark

Both cases contested decisions of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO). Both cases involve two pleas in law; 1) alleging breach of the principle of legal certainty and infringement of Article 75 of Regulation No 207/2009 [decisions of the Office shall state the reasons on which they are based]; and 2) alleging infringement of Article 8(5) of Regulation No 207/2009 [cannot register mark that it is identical or similar to the earlier mark, and is to be registered for goods or services which are not similar, where the earlier mark has a reputation and use of the mark would take unfair advantage of, or be detrimental to, the earlier mark.]

The first case - Louis Vuitton Malletier V EUIPO - Bee-Fee Group (established in Cyprus) - related to the filing of a figurative mark [shown below] in relation to Class 32 (e.g. energy drinks), Class 35 (advertising; Sales promotion) and Class 43 (Bar services; Services for providing food and drink).

The second case - Louis Vuitton Malletier V EUIPO - Fulia Trading (established in UK) - related to an application for registration of a figurative mark [shown below] filed by Fulia Trading in Class 28 (games and gaming machines), Class 35 (marketing and advertising services), and Class 41 (casino facilities, gambling and gaming facilities; online gaming services).

LV Monogram canvas 

Infringement of Article 8(5) of Regulation No 207/2009 

LV argued that given the high degree of similarity between the marks at issue and the strength of the earlier mark, the use of the contested mark gave the intervener [Bee-Fee and Fulia] an unfair advantage and was a detriment to their earlier mark.

The Court examined the similarity of the signs at issue, comparing the visual, phonetic, and conceptual elements and found that, for the English-speaking part of the relevant public, the signs at issue [both Bee-Fee's and Fulia's] had an 'average degree of visual and phonetic similarity'. Despite being conceptually dissimilar, the degree of similarity was held to be average, not ‘at most very low’, as the Board of Appeal considered in the contested decision.

Bee-Fee Group Mark

In relation to the repute of the earlier mark, the contested decision found that the evidence showed use of the word mark LOUIS VUITTON and the Monogram canvas essentially for leather goods, bags in particular, and that, the applicant had produced no convincing evidence as regards the reputation of the earlier mark as such. LV alleged that in this assessment the Board of Appeal ‘openly’ infringed the principle that distinctive character may arise from use as part of a registered mark or in conjunction with a registered mark, if, as a consequence of that use, that sign may serve to identify, in the minds of the relevant persons, the goods to which it relates as originating from a particular undertaking. Thus, LV argued the ‘lv’ element is the predominant and most distinctive element of the Monogram canvas and is the element that consumers will immediately perceive and most easily remember.

EUIPO and the intervener [s] evidently agreed with the approach taken in the contested decision and argued that the fact that the name Louis Vuitton or the Monogram canvas has a reputation does not mean that the earlier mark has a reputation. EUIPO claimed, that the earlier mark was ‘rather “lost” in the overall impression produced by the various elements of the pattern’.

Fulia mark

The Court disagreed with the contested decision, the EUIPO and the interveners, stating that the mark stands out on the canvas. Therefore the Board of Appeal had erred in discounting the possibility that the reputation of the earlier mark could be proved in the documents produced by LV and had conducted an incomplete assessment of the reputation of the earlier mark and, in addition, distorted the clear sense of some of that evidence.

Furthermore, LV argued that the Board of Appeal erred in finding that there was no link between the marks or that it would have had to find that there was a link between the marks at issue, regardless of the closeness between the goods or services concerned. The Court noted that, although the Board of Appeal examined the possibility that the public concerned would establish a link between the marks at issue, it first based its analysis on an incorrect assessment of the similarity of the marks at issue [average, not ‘at most very low’].

Infringement of Article 75 of Regulation No 207/2009 

LV argued that the Board of Appeal could not simply state that it was not bound by previous EUIPO decision-making practice or earlier national decisions, and should have examined, or even specifically identified, earlier decisions relied upon by them. Since the Board of Appeal decided to take a different view from the one adopted in previous decisions, in relation to the reputation of the earlier mark, it should have provided an explicit statement of its reasons for doing so.

This looks familiar
Photo: Christian Holmér

As a result, the Court found that the Board of Appeal’s assessment as regards the application of Article 8(5) of Regulation No 207/2009 to be "vitiated by several errors or lacunae, relating to the comparison of the signs at issue, the existence of the reputation of the earlier mark, the strength of that reputation, and the importance that must be attached to the lack of similarity of the goods or services concerned in the present case."(para 112, both decisions) [Oops!] 

Both the contested decisions were annulled, and LV’s claims upheld. Identical lawyers. Identical judges. Identical pleas in law. Similar marks. Dissimilar Goods. Identical outcomes.