1 November 2009

Fashion frenzy - blurring of trade mark rights

Louis Vuitton Malletier S.A. recently approached the European Court of First Instance (CFI) for an injunction and order for seizure of goods. Louis Vuitton is the proprietor of the famous "Toile Monogram" trade mark.

It sought to prevent Fassina Silvano and various stores in Florence from manufacturing and selling t-shirts depicting handbag models bearing a reproduction of the floral elements of the "Toile Monogram" trade mark without the LV monogram.

Vuitton argued that there was a risk of confusion under Article 20(b) of the Industrial Property Code, which provides that a trade mark proprietor has the right to exclude others from using "a sign identical or similar to a trademark registered for identical or similar products or services, if because of the identity or similarity of the signs and the identity or similarity of products or services, there exists a likelihood of confusion on the part of the public, which may also consist in a likelihood of association of the two signs..."

The Court held that, while the t-shirts did not contain an identical reproduction of the "Toile Monogram", there was a likelihood of confusion, based on the following:

  1. The presence of the t-shirts on the market was relevant considering the subsequent use of the goods, i.e. post-sale confusion.
  2. While Fassina's t-shirts would not mislead buyers, as it bore a label clearly displaying the trade mark ROMEO & JULIET and the marks were used in a slightly different manner (the absence of the LV monogram), they could still mislead consumers in general who, by virtue of being less acquainted with trade marks relating to high-end goods, could regard them as original.
  3. When considering the similarities between the floral elements of the marks and the similarities between the products, a definite risk of association existed.

The Court concluded that consumers could be misled and the impression created that there was an economic link between Louis Vuitton and Fassina or that the t-shirts were produced with Louis Vuitton's authorisation.

Eben van Wyk, Director, and
Rico Burnett, Associate, Intellectual Property

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