15 September 2016Trademarks

Louis Vuitton wins TM case after going toe-to-toe with designer

Luxury fash ion brand Louis Vuitton has succeeded in a trademark infringement suit filed against it in 2014 by US shoe designer Antonio Brown.

The two fashion specialists went toe-to-toe in a dispute centred on the right to affix a metal plate to the toe of luxury men’s sneakers.

Judge Paul Engelmayer of the US District Court for the Southern District of New York Court dismissed the case in Louis Vuitton’s favour on Tuesday, September 13, in a 107-page judgment.

Back in July 2014, Brown and his label LVL XIII (pronounced ‘Level 13’) filed the suit, claiming that Louis Vuitton had infringed his trademarks and trade dress by applying metal nameplates to the toes of the footwear in the ‘On the Road’ fashion line.

Brown’s company holds one registered trademark for ‘LVL XIII’. It has a pending registration for a shoe toe design featuring a rectangular metal plate across the front of the toe with the wording ‘LVL XIII’ engraved in the metal plate, although this review process had been suspended until the outcome of the case.

Engelmayer held that Brown had not “established secondary meaning or a likelihood of confusion” with regard to the trademark infringement claims.

He also held that Brown’s unfair competition claim failed because he had not shown “bad faith or a likelihood of confusion” and that his deceptive business practices claim failed because he had “not shown material deception or public harm”.

Engelmayer added that despite LVL XIII’s efforts to “shoehorn the toe plate into the trademark category, it does not fit” and it served as a “primarily aesthetic function”.

“Accordingly, the toe plate can be classified only as a product design feature which is not inherently distinctive,” he said.

To prevail on the trademark infringement claim, Brown needed to show that the toe plate had acquired a secondary meaning, but the court found that Brown had failed in demonstrating a secondary meaning, adding that “no reasonable juror could find that, by March 2014, consumers had come to perceive the toe plate as an indicator of source”.

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