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12 November 2018Trademarks

Louis Vuitton wins dispute over ‘custom-made’ goods in Japan

The Japan IP High Court has awarded luxury fashion brand Louis Vuitton JP¥1.7 million ($14,921) in a trademark dispute over the sale of custom-made secondhand branded goods.

Japan-based Marks IP Law Firm shared the news of the French brand’s victory on November 4.

At the centre of the dispute was Louis Vuitton’s famous ‘ Toile Monogram’ design mark. The pattern, which features different floral shapes in a particular layout, is used on the brand’s clothing and accessories.

Louis Vuitton accused the individual behind Junkmania, an online clothes retailer, of producing unauthorised shoes, caps, and other fashion items featuring the famous design, and promoting them via the Junkmania platform.

The individual used the material from second-hand Louis Vuitton products to create the goods and then sold them as custom-made remakes, such as ‘Louis Vuitton Remake Denim Cap/Blue’.

Pictures of the disputed goods can be seen on Marks IP’s website.

Louis Vuitton filed a complaint under Japan’s unfair competition statute.

Under article 2(1)(ii) of the Unfair Competition Prevention Act, using a famous source indicator of another entity without permission is not permitted.

In response, the individual claimed that Junkmania had become popular among consumers due to its business in producing custom-made remakes from second-hand genuine branded goods.

Consumers are therefore fully aware that the resulting products are remakes, rather than fake goods or brand new products, so confusion is unlikely to occur, Junkmania's operator argued.

It also claimed that the Louis Vuitton ‘Toile Monogram’ pattern is not a source indicator but rather a design, so the Unfair Competition Prevention Act is not applicable in the circumstances.

However, the Japan IP High Court “decisively dismissed” the individual's claims, according to Marks IP.

Siding with Louis Vuitton, the court ruled that the pattern does act as a source indicator in light of Louis Vuitton’s reputation and recognition in the mark.

The court said that consumers looking at the disputed goods will think of the legitimate brand, and that selling the items as custom-made remakes does not alter this fact.

Marks IP noted that the Unfair Competition Prevention Act is essential in cases where actual confusion might not occur but where there has still been the unauthorised use of a famous brand for a commercial purpose.

The Japan IP High Court made its ruling on October 23.

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