The EUIPO Cancellation Division has ruled in favour of luxury brand Louis Vuitton Malletier (LV) in a case concerning an EU trade mark registration for the figurative mark (pictured) for goods in classes 25 and 26.
When the mark was applied for, LV had opposed it arguing likelihood of confusion under Article 8(1)(b). The opposition was rejected. (LV also argued Article 8(5) infringement during the opposition but did not submit evidence of reputation.)
After the LOVES VITTORIO mark was registered, LV filed an invalidity application based on several registrations for its famous monogram logo (pictured) arguing that the mark took unfair advantage of the reputation of its marks under Article 8(5).
The Loves Vittorio decision
Based on substantial evidence filed by LV, the Cancellation Division found it had proved genuine use of its mark for trunks, travelling bags, bags, handbags in class 18 and clothing articles for women in class 25. It did not decide whether genuine use had been proved for other goods. It also found that the mark had a reputation for those goods.
The Division found that the LV and NL marks were visually similar at least to a very low degree; aurally similar to a very low degree; and conceptually not similar. It also found that, taking into account all the relevant factors and in particular the complementary nature of the goods and the fact that they might be found in the same department or store:
“it must be concluded that, when encountering the contested mark, the relevant consumers will be likely to associate it with the earlier sign, that is to say, establish a mental ‘link’ between the signs.”
It agreed with LV that use of the mark would take unfair advantage, saying that the mark would attract more consumers to the proprietor’s goods, due to a mental association with LV’s mark, which could stimulate its sales:
“It may lead to the unacceptable situation where the EUTM proprietor is allowed to take a ‘free-ride’ on the investment of the applicant in promoting and building up goodwill for the EUTM proprietor’s sign. This would give the EUTM proprietor a competitive advantage since its goods would benefit from the extra attractiveness they would gain from the association with the applicant’s earlier mark.”
Finally, it rejected the proprietor’s argument that it had due cause because it had searched for similar or identical marks and it was inspired by the famous Piazza Vittorio in Turin.
What does this mean?
It was second time lucky for LV in this case. Having been unsuccessful in arguing likelihood of confusion in the opposition, it managed to prove reputation, a link and unfair advantage under Article 8(5) in the cancellation proceedings.
The decision is likely to be welcomed by owners of famous brands. However, it should be noted that LV provided significant evidence regarding use of its mark, such as revenue figures, social media data, court decisions, examples of enforcement actions, magazine and website articles, adverts and marketing material.
Bringing these kinds of actions should be undertaken with considerable thought and preparation, given the challenges of compiling and presenting such a large amount and wide range of evidence. If you would like to discuss this further, please contact us.
To find out more about the issues raised in this blog contact Rosie Burbidge, Intellectual Property Partner at Gunnercooke LLP in London - rosie.burbidge@gunnercooke.com
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