Louis Vuitton was established in 1854 and is one of the world’s leading luxury goods companies. It is without doubt also a brand which is very extensively counterfeited. In this case, the Respondent used several brand elements which were suggestive of both Louis Vuitton’s brands, but also, as noted by the judge, Louis V of France (although the court noted that “the monarch appears to have been a young man of no particular distinction”.
Louis Vuitton claimed that Sonya Valentine had infringed Louis Vuitton’s trade marks and engaged in misleading and deceptive conduct and unfair practices under the Australian Consumer Law, specifically with regard to the importation and sale of sunglasses that bear the mark "LOUIS V" and a flower symbol that bears a striking resemblance to Louis Vuitton's flower symbol. You can check the image below for comparison (the left image is a sample of the sunglasses in question, the right is Louis Vuitton's flower symbol):
The respondent did not appear in the hearing before Jessup J of the Federal Court.
The ruling is interesting because the inherent and considerable goodwill and reputation enjoyed by Louis Vuitton did not have any bearing on whether the infringing trade mark was deceptively similar to those of Louis Vuitton. Jessup J expressly stated that the decision in C A Henschke & Co v Rosemount Estates Pty Ltd (2000) 52 IPR 42 had the “final word” on the relevance of reputation in an infringement where the marks are considered to be deceptively similar. The court said,
“in assessing the nature of a consumer’s imperfect recollection of the “ LOUIS VUITTON ” mark in the present case, to note the reputation of the applicant by reference to that mark, I do not consider the above evidence establishes that the 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”. The goods, of course, are sunglasses, and, although I accept that the applicant has an established reputation in that regard, I do not accept that that reputation crosses the high bar set by the Full Court in Henschke.”
The court also found that the LOUIS V mark of itself is not deceptively similar to the mark “LOUIS VUITTON”. The Court said:
“We are, of course, concerned with words rather than symbols or drawings. Ignoring for the moment the applicant’s reputation (a subject to which I turn next), even a person who was aware of the registered mark would not necessarily, unless prompted, think that the “V” was a shorthand reference to “ Vuitton ”…. Particularly in a case such as the present in which the applicant’s name, repeated on the heading of every court document, includes the mark which it seeks to protect, it is tempting for a judge – and for counsel for that matter – to regard the mark as the centre of the universe, and thus readily to perceive a deceptive similarity in some other mark which has something in common with it. That temptation must be resisted. ”
However, where trade mark protection failed, the Australian Consumer Law (the ACL) and its flexible and ubiquitous misleading and deceptive conduct provisions came to the rescue. The court accepted that Louis Vuitton has an established reputation in relation to sunglasses, and coupled with the presence of the flower symbol (which was accepted as being deceptively similar to Louis Vuitton's registered trade mark), along with the use of the word LOUIS V, in aggregation had the effect of misleading consumers into thinking that the sunglasses were associated with Louis Vuitton, contrary to the ACL.
One other issue that Louis Vuitton argued was that some of the sunglasses were also marked "EYEWEAR EST. 1941 PARIS." There was no evidence that the sunglasses were connected with Paris - they were manufactured in China – and this was regarded by the court as a false representation.
While it is not surprising that Louis Vuitton succeeded, why Louis Vuitton did not rely upon section 120 (3) of the Trade Marks Act and its “well-known mark” provision (to which Louis Vuitton could certainly have availed itself) and confined itself to the more perilous option of reliance under section 120(1) is not obvious from the judgment. A practical outcome is that without having established trade mark infringement, under the ACL, the remedy of an account of profits is not available. The judge noted this and confined his order around monetary remedies to damages only – a limitation of the rights that would otherwise have been available to Louis Vuitton. It may be there was some reluctance to pursue the respondent under the well-known mark subsection under section 120 because it is not at all well-explored by Australian courts other than in the context of interlocutory injunctions. But, Louis Vuitton should lament the opportunity to have advanced the fight at least in Australia against its ongoing counterfeit problem.