News
Victoria & Lawrence Osborne v Louis Vuitton Malletier, 0/0026/24, 16 January 2024
12 February 2024
Yet another David v Goliath trade mark dispute before the UKIPO with David coming out on top. The UKIPO delivers another lesson to big brands on the pitfalls of being overzealous in their trade mark enforcement strategy before the UKIPO. It also brings to mind Zara’s failed attempt to oppose a UK trade mark application for:
by the owner of a clothing boutique.
On 6 December 2021, Victoria and Lawrence Osborne (“the Applicants”) applied to register in the UK the following figurative trade mark in Classes 6 and 31:
(“the Applicants’ Mark”)
The Applicants’ goods in Class 6, which could be summarised as gardening and construction hardware, include the limitation “all the aforesaid in relation to plant and planting, garden and gardening apparatus, equipment and paraphernalia” and their Class 31 goods protect plants and associated products.
Undeterred by this, Louis Vuitton Malletier (“the Opponent”) opposed the application, pursuing Sections 5(2)(b), 5(3) and 5(4)(a) of the UK Trade Marks Act 1994 (“the Act”).
The Opponent relied on the following earlier marks:
in Class 6; and
in Class 3; and
in Classes 18 and 25.
Mark 1. was relied upon to allege a likelihood of confusion under Section 5(2)(b) 2. and 3. were said to have a reputation in Classes 3, 18, and 25, which was allegedly harmed by the Applicants’ Mark.
Also, relying on Section 5(4)(a), the Opponent asserted unregistered rights in 2. and 3. resulting from use since 2000 throughout the UK.
The Applicants denied all claims.
On the Class 6 grounds above at 1., as the Opponent’s mark was subject to use requirements, a fair specification of “metal components for leatherware especially closure systems, locks and padlocks” was determined based on the use evidenced by the Opponent.
Interestingly, the Hearing Officer (“HO”) considered the concept of a “gardening bag”, as put forward by the Opponent as being covered by the fair specification. It was noted these goods could be considered both as gardening paraphernalia and as an item of leatherware. Considering Section 5(2)(b), the Hearing Officer was willing to accept the Opponent’s position that the Class 6 goods were similar to at least a low degree, although it was noted this was “something of an unnatural strain”.
In assessing the similarity of the marks, the HO noted that, despite the respective marks sharing the letters L and V, the Applicants’ Mark did not include a monogrammatical feature, which was said to be the aspect that enhanced the distinctiveness of mark 1., as well as being its dominant feature.
As a result, and considering the low degree of similarity between the goods at issue, the HO noted the average consumer, who would pay a low/medium degree of attention given the goods at issue, would not mistake the marks for one another, ruling out any direct confusion. On indirect confusion, despite the Opponent alleging the Applicants’ Mark could be considered a sub-brand of the Opponent, it was decided that the letters L and V did not have distinctive significance independent of the significance of mark 1. as a whole. The Opponent had attempted to convince the HO that while perceiving the composite mark the average consumer would also perceive the constituent letters L and V as being independently significant.
On the reputational grounds, the HO concluded the presence of two common letters was not sufficient to take unfair advantage, or reduce the distinctiveness, of the earlier marks given their distinctiveness “derives majorly” from configuration as monograms.
On Section 5(4)(a), the Opponent relied on its monograms at 2. and 3. and prominent use of the following pattern:
The HO confirmed goodwill in the earlier signs for perfumes, trunks, travelling bags, chests, bags, handbags, pocket wallets, purses, card holders and clothing.
However, the HO determined that there was no misrepresentation. It was noted that the Applicant operates in a separate and niche area compared to that of the Opponent, and that there was nothing in the facts to show any fraudulent intent or contrived similarity on the part of the Applicants in applying for their sign.
Resultantly, the opposition failed on all grounds.
Lessons
This case demonstrates the pitfalls of straining unnaturally to attempt to succeed in opposition cases where there is no tangible commercial overlap, if any, in the markets of the respective parties. Practitioners in this area should bear in mind the need to satisfy there is real similarity between the respective goods/services of the parties in the dispute, reputation can only take you so far.
It would have been interesting to see whether the decision would have differed if the Opponent had an earlier plain word mark for LV, given the HO’s comments on the reasoning on composite marks with monogrammatical features.
Mark Caddle
Trade Mark group
This publication is a general summary of the law. It should not replace legal advice tailored to your specific circumstances.
© Withers & Rogers LLP February 2024
