Louis Vuitton

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In two cases recently heard by the Sixth Chamber of the European General Court (“EGC”), Louis Vuitton Malletier (“LV”) successfully brought claims in defense of its trademark.

The LV brand is registered for goods in classes 18 and 25, among others. LV requested a declaration of invalidity of two subsequent brands, which both the Cancellation Division and the Board of Appeal of the European Union Intellectual Property Office (“EUIPO”) rejected. LV appealed these decisions before the EGC. The court ruled in LV’s favor in both these cases held on the same day before the same judges and with the same lawyers. See: T‑372/17 (LV v. EUIPO/Bee-Fee) and LV T‑373/17 (LV v. EUIPO/Fulia Trading).

In both cases, the judgments of EUIPO’s Fourth Board of Appeal were challenged based on two arguments: (i) breach of the general principle of legal certainty and infringement of Article 75 of Regulation 207/2009 (now substituted by Regulation (EU) 2017/1001), which establishes that EUIPOS’s decisions must state the reasons on which they are based; and (ii) breach of article 8(5) of the same regulation, which establishes the prohibition of registration of a trademark where it is identical with or similar to an earlier trademark and is to be registered for goods or services that are not similar to those of the earlier trademark, where the earlier trademark has a reputation and the use without due cause of the trademark applied for would take unfair advantage of or be detrimental to the distinctive character or the repute of the earlier trademark.

Regarding the failure to state the reasons for the decision, LV claimed that (i) the board of appeal could not limit itself to declaring that it was not bound by previous EUIPO case law or by previous national judgments, and (ii) it should have stated why it did not follow the doctrine established by previous judgments concerning the brand’s reputation. The EGC accepted this argument, concluding that the board of appeal effectively breached article 75 of the regulation, although it highlighted that this breach in itself was not enough to annul the contested decision, given that, despite not recognizing the reputation of the previous brand, the decision was also based on the lack of other requirements necessary for LV’s claim to be successful.

Accordingly, the court then examined whether the board of appeal correctly evaluated the concurrence of the requirements of article 8(5) of the regulation. In particular, it examined whether (i) the board of appeal was right in concluding that the brands were not similar, (ii) it could disregard the reputation of the previous brand based partly on the evidence presented by the applicant, and (iii) the conclusion that there was no link between the two brands was erroneous in any way.

After comparing the brands, the court concluded that they were similar overall and that the board of appeal had erred in considering them dissimilar or not very similar. Regarding the LV brand’s reputation, the court held that the board of appeal had not adequately considered the evidence presented. Finally, the board of appeal considered that, even if it recognized the previous brand’s reputation, the use of the new brand would not take unfair advantage of or be detrimental to the distinctive character or the repute of the earlier trademark because, among other reasons, the relevant public would not link it with the other brand. The EGC considered that this finding was incorrect and was based on an erroneous perception of the similarity of the brands and the reputation of the previous brand. The court highlighted that the fact that the goods were different is not an obstacle, given that article 8(5) does not in any case require the goods or services to be similar.

Therefore, the EGC annulled the board of appeal’s judgment and ruled in favor of LV in both cases.

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