By Melinda Upton and Carly Roberts
The Federal Court recently handed down judgment in Louis Vuitton Malletier v Sonya Valentine Pty Ltd  FCA 933. Louis Vuitton Malletier (Louis Vuitton) alleged that Sonya Valentine Pty Ltd (Sonya Valentine) had infringed its trade marks and engaged in misleading and deceptive conduct and unfair practices under the Australian Consumer Law (ACL) by importing into Australia and selling sunglasses bearing the mark “LOUIS V” and this symbol:
A small number of sunglasses it sold also bore the expression “EYEWEAR EST. 1941 PARIS”.
Louis Vuitton’s relevant registered trade marks were its “LOUIS VUITTON” mark and its flower symbol:
Trade mark infringement
Louis Vuitton alleged that the “LOUIS V” mark was deceptively similar to its “LOUIS VUITTON” mark, and that the flower symbol appearing on Sonya Valentine’s goods was deceptively similar to its own flower symbol.
Jessup J was quick to accept that the flower symbol used by Sonya Valentine was deceptively similar to Louis Vuitton’s flower symbol. However, his consideration of whether “LOUIS V” was deceptively similar to “LOUIS VUITTON” raised an interesting question about whether Louis Vuitton’s reputation should be taken into account.
Ordinarily, reputation in a trade mark has no bearing on whether the trade mark is deceptively similar to another mark. However, in rare cases where the trade mark is “notoriously so ubiquitous and of such long standing that consumers must generally be taken to be familiar with it and with its use in relation to particular goods or services”, it can be taken into account (C A Henschke & Co v Rosemount Estates Pty Ltd (2000) 52 IPR 42). Jessup J noted that Louis Vuitton had an established reputation in relation to sunglasses but did not think that its reputation crossed the “high bar” set in Henschke. Ultimately, Jessup J held that the “LOUIS V” mark was not deceptively similar to the “LOUIS VUITTON” mark.
The ACL actions
Louis Vuitton claimed that Sonya Valentine engaged in misleading and deceptive conduct in contravention of section 18 of the ACL and made false or misleading representations in contravention of section 29(1) of the ACL.
Jessup J quickly disposed of this aspect of the case, holding that due to Louis Vuitton’s reputation, a consumer would be misled into thinking that Louis Vuitton was associated with the sunglasses marked with “LOUIS V” and/or the flower symbol.
Sonya Valentine’s use of “LOUIS V” and the flower symbol were held to be misleading representations that its sunglasses had Louis Vuitton’s sponsorship or approval.
In relation to the sunglasses marked “EYEWEAR EST. 1941 PARIS”, Jessup J noted that Sonya Valentine had made no attempt to respond to Louis Vuitton’s allegation that this representation was false or misleading. His Honour was satisfied that the representation was false, because there was no evidence that the sunglasses (which were made in China) were connected to Paris.
Louis Vuitton was successful in obtaining injunctions and monetary remedies against Sonya Valentine, as well as the delivery up of all sunglasses displaying the infringing flower symbol. The Court also declared that Sonya Valentine had used the flower symbol as a trade mark and infringed Louis Vuitton’s flower symbol mark.
The bottom line? A trade mark owner will have to be more famous than Louis Vuitton if it seeks to rely on its reputation in a trade mark infringement dispute!