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Feynman LIANG
Patent & Trademark Attorney
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Published on August 3, 2019
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Victory eventually came to Louis Vuitton after its long-term fight in trademark invalidity proceedings.
Mark in dispute
Four years ago, Louis Vuitton launched an invalidity petition against a registered mark “LV 唯依”（read as “weiyi”）with Trademark Review and Adjudication Board. The mark in dispute was registered by Company A for electric cable and electric wire in class 9. As shown above, although the mark in dispute looks similar to Louis Vuitton’s mark, the goods designated are scarcely related to the core goods designated in Louis Vuitton mark registration.
Trademark Review and Adjudication Board (hereafter referred as “TRAB”) held that the mark in dispute and Louis Vuitton’s mark are different from appearance and sound. Furthermore, these two marks' good are also different from the perspectives of use and customers. Therefore, the goods of these two marks are dissimilar goods. In conclusion, these two trademarks are different trademarks for different goods. As a result, coexistence of these two marks will not lead to confusion among relevant public as to the source of origin. The registration of the mark in dispute was decided by TRAB to be valid.
Louis Vuitton started an administrative litigation against TRAB before Beijing IP Court and the case eventually went further up to Beijing Higher People’s Court. Louis Vuitton succeeded in obtaining favorable judgement from both courts. First of all, Louis Vuitton’s mark was decided by both courts as well-known trademark due to continuous and extensive promotion and use of trademark based on the evidence of advertisement, sales record, previous court decisions on Louis Vuitton’s mark as well-known trademark and awards received in recent years. Secondly, as for the mark in dispute, it is comprised of two portions: “LV” and “唯依” (“Weiyi”). The portion of “LV” represents more than 50% of visualized area of the mark and therefore “LV” portion shall be deemed as distinctive portion of the mark. Furthermore, the shape and way of combination of the word “LV” is similar to Louis Vuitton’s mark, leading to high degree of similarity of overall appearance and visual effect of these two marks. Therefore, the mark in dispute is found to be a copy and imitation of Louis Vuitton’s well-known trademark. In conclusion, the court held that the registration of the mark will lead to confusion among relevant public and harmful to the interest of Louis Vuitton as the owner of well-known trademark.
When the mark in dispute is in a different class than the brand owner’s trademark, recognition of well-known trademark offers possibility of cancellation. However, this approach is not easy. Firstly, very high degree of extensive use and reputation within the territory of China have to be proved. Secondly, for well-known trademark among relevant public, though not in the same class, goods of the mark in dispute somehow should be related to the well-known trademark in terms of field, nature of the goods and group of consumers so that it would sufficiently lead to confusion among relavant public as to the source of the goods. For example, in the case Exxon Mobil vs. Beinongguoxin, the goods of Exxon Mobil’s mark are lubricating oil etc. while the goods of Beinongguoxing’s mark is pesticide. Exxon Mobil succeeded in persuading the judge to make decision on the recognition of well-known trademark. In this case, the judge believed both Exxon Mobil’s goods and Beinongguoxing’s goods are chemical product and shared certain common characteristics. The use of Beinongguoxing’s trademark had caused cross-class confusion, making the consumers believe that the products of Beinongguoxing were provided by the Exxon Mobil or its related party.
According to practice in China, if the trademark is not only well known among relevant public but also among general public, the law provide wider coverage of the mark with scope of exclusivity extended to classes that may not be related to the goods of the well-known trademark. In this case, leather goods, which is Louis Vuitton’s goods, is not related to Company A’s goods which is electric cable and electric wire but both courts believe that the use of the mark will lead to confusion among public and harm the interest of Louis Vuitton. In another case Tsinghua University v. Juyang New Energy Co., Ltd., (Tsinghua University is a well-known university in China) Tsinghua’s services are education, school etc. in class 41 while Juyang‘s mark is registered for goods of heater, which is unrelated to the services of Tsinghua’s trademark. In spite of this, the court decided that Juyang’s use of the mark on heater is covered by Tsinghua’s registered trademark because Tsinghua’s mark is well known among general public and use of the mark on heater will lead to confusion among public and harm to Tsinghua.
Trademark use and reputation is the key to the success of many types of trademark cases such as opposition, invalidity and enforcement. If the trademark is recognized as well-known trademark in administrative or court proceedings due to extensive use and high reputation, the scope of protection may be extended beyond the original registration to cover the adverse party’s mark. Therefore, in the business operation on daily basis, brand owners are advised to duly archive the evidence of use, promotion activities, sales record as well as awards received in relation to their marks to provide sufficient evidence in preparation for any potential cases in the future.
Photo source: https://www.snapdeal.com/product/lv-louis-vuitton-belt-us/181663754
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