Trade Mark News & Information

Trademark Lawyers Australia – Federal Court – Louis V

Louis Vuitton Malletier v Sonya Valentine Pty Ltd [2013] FCA 933 (19 September 2013)

Successful application by Louis Vuitton for infringement and breach of the Australian Consumer Law arising from the conduct of Sonya Valentine in importing and selling sunglasses sourced from China bearing LOUIS V and a flower design.

Louis Vuitton’s registered trade mark is shown below:

Louis Vuitton

Some of the infringing sunglasses were sold bearing the following flower design:

Sonja Valentine

The judge, Jessup J, had no hesitation in finding the flower design was deceptively similar to Louis Vuitton’s registered trade mark and infringed.

However, Jessup J, was not prepared to find use of LOUIS V was deceptively similar to Louis Vuitton’s registered LOUIS VUITTON trade mark and so there was no infringement. The relevance of considering the reputation of the LOUIS VUITTON trade mark was also discussed with reference to Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020 and C A Henschke & Co v Rosemount Estates Pty Ltd (2000) 52 IPR 42, but Jessup J did not consider the evidence established that the LOUIS VUITTON mark “is notoriously so ubiquitous and of such long standing that consumers generally must be taken to be familiar with it and its use in relation to particular goods”.

However, Jessup J was satisfied that the expression “LOUIS V” was a misleading representation that the sunglasses to which it was applied had the sponsorship or approval of Louis Vuitton and contravened s 29(1)(g) of the Australian Consumer Law.