EU court hands double trademark win to Louis Vuitton
The EU General Court today sided with luxury fashion brand Louis Vuitton in two separate trademark appeals, which both date back to 2014.
In one case, UK-based Fulia Trading applied to register an EU trademark with the European Union Intellectual Property Office (EUIPO) in classes 28, 35, and 41, covering playing cards, gaming machines, advertising/marketing services, and in-house gaming facilities.
The mark showed the words ‘LV Bet’ above ‘Zakłady Bukmacherskie’. The words, in white and yellow, are set within a black square background.
Zakłady bukmacherskie translates from Polish as betting.
French fashion brand Louis Vuitton filed an opposition to the mark in 2015, arguing that it would be confused with its earlier-registered figurative mark (EU number 15,628, renewed until 2026).
The mark, which shows stylised letters ‘L’ and ‘V’ in the same space, is registered in classes 18 and 25 for leather goods and clothing.
Louis Vuitton also relied on its reputation, associated with its trademark, within the EU and in relation to the covered goods.
The Opposition Division upheld the opposition. Although the marks had a low degree of similarity, the division said, it found that the applied-for mark would take unfair advantage of the reputation and distinctive character of the earlier mark.
But, in 2016, the Fourth Board of Appeal sided with Fulia and annulled the decision.
The board rejected the opposition in its entirety, on the grounds that the goods and services covered by the respective marks are sufficiently dissimilar to rule out a likelihood of confusion.
It also found that Louis Vuitton had not proven that the combination of the letters ‘L’ and ‘V’ would be known by a significant part of the relevant public.
In the other case, Cyprus-based Bee-Fee Group filed to register a figurative trademark in classes 32, 35, and 42, covering energy drinks, advertising, and bar services. The mark, also filed in 2014, depicted the letters ‘LV’ and the words ‘Power Energy Drink’ in black and pink.
The mark (number 12,898,219) was registered but, in 2015, Louis Vuitton asked for it to be invalidated, relying on the same mark (and its reputation) as it did in the Fulia proceedings.
The Cancellation Division rejected the application for a declaration of invalidity in 2016, finding that the goods and services offered by Louis Vuitton and Bee-Fee are sufficiently dissimilar that a likelihood of confusion does not exist.
In 2017, the Fourth Board of Appeal dismissed Louis Vuitton’s appeal as, even if Louis Vuitton had proven the claimed reputation of the mark, Bee-Fee’s use of its mark would not take unfair advantage of Louis Vuitton’s earlier-registered mark.
The French fashion brand appealed against both decisions, and today, the General Court sided with Louis Vuitton in each case.
In the Fulia proceedings, the court said that, in earlier and unrelated matters, the EUIPO had found that Louis Vuitton’s asserted mark enjoys a “substantial reputation” in the EU, and the board failed to “conduct a full assessment” of this reputation.
The court also found that the board erred in its assessment of the marks, so based its analysis of a likelihood of confusion on an “incorrect assessment of the similarity of the marks at issue”.
The court used the same reasoning in coming to its conclusion in the Bee-Fee dispute.
Upholding Louis Vuitton’s appeals, the court annulled both decisions of the EUIPO. It ordered Fulia and Bee-Fee to pay their own costs and half of those incurred by Louis Vuitton, and the EUIPO to bear its own costs and the other half of Louis Vuitton’s in each case.
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