23/02/2024
The luxury fashion brand Louis Vuitton has a strong track record of success in trade mark oppositions. Yet, it has recently found itself on the losing side in its UKIPO dispute with the family-run gardening business L V Bespoke.
It’s a fitting reminder that big brands can’t expect a significant reputation to carry them to success for every area of commerce. Equally, it demonstrates that IP protection is in reach for companies of all sizes.
David v Goliath
Louis Vuitton attempted to block L V Bespoke’s trade mark application from gaining protection in the UK. Their mark is a stylised LV Bespoke (Fig. 2) and they were applying to register goods including plants, planters and metal goods to support plants covering Classes 6 and 31. Louis Vuitton had registrations (Fig 1), some of which covered Class 6 as well. Louis Vuitton alleged that a likelihood of confusion would arise between its logo registration and L V Bespoke’s applied for mark.
Louis Vuitton also claimed that, because of its enhanced reputation in the UK, the relevant public would make a link between the L V Bespoke mark and the Louis Vuitton registered marks for any goods, not just those in the fashion sector. Consequently, it argued that L V Bespoke could gain an unfair advantage if its mark were to be used in the form that it sought to be registered on the goods of the application.
Despite filing evidence to support its claim to global recognition and of a strong track record of successful oppositions, the UKIPO was not convinced by Louis Vuitton’s arguments that a likelihood of confusion, nor a mental link, would arise. Accordingly, Louis Vuitton’s opposition failed on all grounds.
This decision is an important one for small businesses such as L V Bespoke. Whilst, on the face of it, it may appear that a globally renowned brand with lots of money would automatically succeed in a trade mark dispute against a small, family-run business, this is a prime example of how any business, no matter the size or scale, can secure the benefit of intellectual property registration.
Wider Considerations
Cases that pit an established brand against a smaller business often make their way into the mainstream press and typically paint the big name as the aggressor. Whilst this is good publicity for the underdog, it may cause a headache for the PR department of the global business taking action. easyGroup Ltd v Easy Life is a great example.
This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking any action in reliance on it.
