Scintilla – a flash, a spark, an iota. Shorthand for creativity and an indicator of inventiveness under Australian law.

Friday, November 8, 2013

Ooh là là: King Louis the 5th more famous for sunglasses than Louis Vuitton?

By Kimberley Evans, Trade Mark Attorney

In Louis Vuitton Malletier v Sonya Valentine Pty Ltd [2013] FCA 933, Louis Vuitton attempted to prevent the importation and sale of sunglasses by Sonya Valentine, alleging trade mark infringement and misleading and deceptive conduct. The sunglasses in question bore the following flower emblem:

and/or the words 'LOUIS V', while Louis Vuitton holds trade mark registrations for LOUIS VUITTON and the following logo:

Justice Jessup had no problems deciding that the flower emblem featured on the sunglasses was deceptively similar to Louis Vuitton's registered flower logo trade mark. However, His Honour found that the words LOUIS VUITTON and LOUIS V were not deceptively similar, saying 'a viewer of the words [LOUIS V]…might initially think them a reference to Louis V of France' and that 'Although the putative consumer of ordinary intelligence is assumed to have had some acquaintance with the [LOUIS VUITTON] mark, there is no assumption that or she…is so imbued with the imagery of the registered mark as to fall instantly into the state of deception to which s 120 of the TM Act refers'.
A straw poll of practitioners (of above-ordinary intelligence) on this floor revealed a hands-down win for Louis Vuitton over the late King of France. So why did Justice Jessup not agree?

While Justice Jessup may not be an aficionado of Monsieur Vuitton's fashion accessories, his comments regarding the necessity of supporting claims of reputation with suitable evidence were bang on the mark (although other commentators argue that the reputation of a trade mark has no place whatsoever in trade mark infringement proceedings*). Louis Vuitton's evidence of the reputation of the LOUIS VUITTON trade mark in Australia consisted of a two-paragraph-long statement from Louis Vuitton's solicitor where both paragraphs began with the words 'I am instructed…'.  Louis Vuitton sought to persuade Justice Jessup with these brief statements that the LOUIS VUITTON trade mark was that type of trade mark which is 'notoriously so ubiquitous and of such long standing that consumers generally must be taken to be so familiar with it and with its use in relation to particular goods or services [that the reputation of the trade mark] is a relevant consideration'**.

Justice Jessup, perhaps unsurprisingly, found that the two paragraphs were insufficient to establish the reputation of the LOUIS VUITTON trade mark in Australia for the purpose of assessing the deceptive similarity of the signs.

Louis Vuitton is not the only trade mark owner to fall into the trap of providing insufficient evidence to establish a trade mark's reputation. In a trade mark opposition case in New Zealand last year***, Nestle failed to provide sufficient evidence to prove that MILO – another product that the Allens IP team is fond of – was well known in New Zealand. 

So, the message to take home (in your flat-bottomed, monogrammed trunk) is: substantiate your brand's reputation with good evidence!

* See Davison, Mark, Reputation in Trade Mark Infringement: Why Some Courts Think it Matters and Why it Should Not (2010). Federal Law Review, Vol. 38, p. 231, 2010; Monash University Faculty of Law Legal Studies Research Paper No. 2010/26. Available at SSRN:
** C A Henschke & Co v Rosemount Estates Pty Ltd (2000) 52 IPR 42 at 66-67
***  Eastern Global Triumph Sdn Bhd v Societe des Produits Nestle SA [2012] NZIPOTM 10

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