On Friday, October 4, 2024, the Opposition Division of the European Union Intellectual Property Office, or EUIPO for short, granted in its entirety the opposition No. B 3198676 filed by the famous luxury fashion house Louis Vuitton, which was filed on June 30, 2023 against the European Trademark application No. 18832921 of Italian-based applicant Qingjian Fu.

The reason for filing the opposition was that the pattern on applicant Qingjian Fu's mark featured similar characteristics (flowers, letters, and stars, which were also depicted on its products) to the distinctive monogram of Louis Vuitton, the well-known 'Toile Monogram’.

Under Article 8(5) EUTMR, "the contested mark shall not be registered where it is identical or similar to an earlier trade mark, regardless of whether the goods or services to which it (the trade mark) applies are identical or similar to those for which the earlier trade mark is registered". Louis Vuitton first registered its trademark in 1986, and the application for the contested trademark was filed on February 7, 2023. Accordingly, Louis Vuitton is entitled to prove priority date and reputation over the contested trademark. For this reason, it had successfully demonstrated, through extensive evidence including product photographs, articles, etc., the longevity of its trademark and priority date over Qingjian Fu's contested trademark. In other words, it was proved that the earlier trademark of Louis Vuitton had been used for a substantial period of time and that the well-known luxury brand had taken significant steps to build its image and familiarize the consumer public with that mark.

Regarding the territory of the earlier trade mark, the Opposition Division concluded that for the earlier European trade mark, it is sufficient that the earlier trademark has a reputation in the territory of a single Member State and is well known to a substantial part of the public in at least two Member States, namely France and Italy, as there was evidence of reputation in other countries of the European Union, including Greece.

As far as the distinctive signs on Qingjian's contested trade mark are concerned, visually the monograms differ from each other (L and V of Louis Vuitton and R and B of the contested sign) and similarities are found to a significantly low degree. However, the overall structure of the contested mark is similar to the pattern with flowers, stars and letters. Subsequently, aurally, the signs differ in the way the letters L and V of the earlier mark and R and B for the contested mark are pronounced, therefore they are considered to be aurally dissimilar. However, despite the fact that the similarity between the patterns is low, the pattern used by Qingjian Fu on its products bears a similarity to that of Louis Vuitton in its overall structure, therefore the average consumer in Italy and France is likely to associate the sign with those of Louis Vuitton, namely the earlier trademark, and Louis Vuitton is likely to suffer significant injury. Indeed, the existence of a 'link' between the signs is important prerequisite for further assessment of the risk that the use of the contested mark would have an unfair advantage or be detrimental to the distinctive character or reputation of the earlier trademark. In order to determine whether there is a link between the two trademarks and whether there is a risk of harm or unfair advantage, the Opposition Division examined specific criteria. These criteria are not exhaustive, as other criteria may be taken into account, and include the following:

• the degree of similarity between the signs

• the nature of the goods and services, including the degree of similarity or dissimilarity between those goods or services and the relevant public

• the strength of the earlier mark’s reputation

• the degree of earlier mark’s distinctive character, whether inherent or acquired through use

• the existence of likelihood of confusion on the part of the public.

Subsequently, according to Article 8(5) EUTMR, the conditions concerning the likelihood of damage are as follows:

• The contested mark takes unfair advantage of the distinctive character or the repute of the earlier mark

• It is detrimental to the repute of the earlier mark

• It is detrimental to the distinctive character of the earlier mark.

However, a mere possibility is not sufficient. The opponent must prove that the damage or unfair advantage is likely in the sense of being foreseeable in the ordinary course of events. For this purpose, the submission of evidence, or at least a coherent line of argument demonstrating what the damage consists of, is required. The Opposition Division concluded, through the evidence filed by Louis Vuitton, that its trade mark has a significant reputation in the market and there are some similarities between the marks and a significant degree of proximity between the conflicting products, therefore Qingjian Fu is presumed to take unfair advantage over the reputation of Louis Vuitton's earlier trademark in France and Italy. It also concluded that the use of the contested mark would be detrimental to the distinctive character and reputation of the trade mark of the famous fashion house. The applicant was ordered to pay EUR 620 in costs and its application for registration of its trade mark at the EUIPO was rejected in its entirety.

The conclusion of this decision underscores the importance of legal protection for fashion brands, especially in matters of IPR issues, as similarities in the products or marks of others may cause significant damage brand’s reputation confuse the average consumer by associating with well-known fashion houses.

For more on the purpose of Article 8(5) EUTMR click here

For more on the Louis Vuitton v. Qingjian Fu case click here,  here and here