Stylish Woman With Shopping Bags Cropped

Louis Vuitton Trade Mark Disputes: High-End and High-Stakes

In the fashion world, your name and reputation are crucial. The name of your brand and the distinctive branding elements you use to mark it (for example, a logo) can be protected by trade marks, to ensure customers can clearly identify your brand and to stop others from capitalising on your distinctive branding features, potentially damaging your hard-earned reputation.

To learn more about the ways that different intellectual property rights can be utilised in the fashion industry, see our past article Intellectual Property in Fashion.

Luxury brand Louis Vuitton has recently been involved in multiple trade mark-based cases, with one resulting in a win, and the other a loss. These legal battles by big fashion names showcase some of the strengths of trade marks as well as intricacies of how the system works, and to what extent a trade mark registration can protect your brand.

Win: The Pooey Puitton Case

Some of the main benefits of trade mark registration is the ability to stop others from capitalising on your brand’s reputation. Growth and huge revenue are particularly of concern for high-end fashion labels such as Louis Vuitton. As a brand with a high level of recognition worldwide, there is a very real possibility that others might try to “piggyback” off of Louis Vuitton’s prominence in the fashion world.

One such case was in relation to a product sold by MGA Entertainment, a toymaker and distributer in the US: Poopsie Pooey Puitton. The toy was a poop emoji shaped carry bag sporting a multicoloured pastel print. There were multiple legal actions fired back and forth between the two organisations over this toy, the most recent of which resulting in a decision by the Paris Tribunal of First Instance in April 2024.

The fashion giant argued that MGA Entertainment was intentionally exploiting their trade marks to gain popularity, including using the name “Pooey Puitton” as a reference to brand name “Louis Vuitton” and the rainbow print that obviously alluded to Luis Vuitton’s signature print, and therefore implied a relationship between Louis Vuitton and the toy. Such a relationship did not exist. Louis Vuitton was not involved in the design, development, or marketing of the Pooey Puitton bags, nor had it granted permission to use the relevant trade marks.

Although MGA fought back, including an argument that the bags were an example of parody and should therefore be exempt from the legal action, the French court found that the use of the name “Pooey Puitton” and the colourful floral print evoked Louis Vuitton’s trade mark for the brand’s name and monogram print (for example, that used in the 2003 collaboration with Takashi Murakami), and were in fact being used in this way to intentionally capitalise on Louis Vuitton’s name and reputation, purposefully creating a mental link for consumers to associate the toy with the fashion brand.

Loss: Louis Vuitton vs L V Bespoke

However, merely owning a trade mark that has a reputation is not always enough to stop the use of a mark that you as the owner deem similar.

In 2021, UK home and garden goods firm L V Bespoke attempted to register their business’ logo as a trade mark. Louis Vuitton objected to the mark, both stating that it would cause confusion with their well-established LV monogram trade mark and citing it as an example of “passing off” to give customers the impression that there was a link between Louis Vuitton and L V Bespoke.

L V Bespoke was attempting to register their trade mark in Class 6 (for various metal equipment and paraphernalia related to plants and gardening) and Class 31 (for plants) in the UK. The LV monogram was also registered in Class 6, however the hearing officer decided that the listed goods would be better described as “metal components for leatherwear especially closure systems, locks and padlocks” – a less broad description than the registration originally covered. Bearing this in mind, there was a low level of similarity between the goods covered by L V Bespoke’s trade mark and those of Louis Vuitton’s trade mark.

The dispute went on for two years, but in the end the UK IPO ruled that due to a determination of low visual similarity between the L V Bespoke mark and the LV monogram mark, as well as the difference in the goods sold by Louis Vuitton and L V Bespoke, there was a low likelihood of confusion for consumers, and no indication that L V Bespoke was engaging in intentionally fraudulent behaviour.

This case showcases one limitation of trade mark registrations: they only apply to a certain scope. During opposition proceedings, the IP office will decide if there is a real possibility of confusion between the mark being opposed and the mark it is allegedly infringing. If it is decided there is little relation between the goods, or low visual similarity between the marks, objecting to the registration may not go your way.

Take Aways

Trade mark registrations are valuable tools in the protection of your brand, no matter what size your business. However, even if your mark is registered, brand owners should remain aware of other marks being registered in the jurisdiction which may infringe upon their rights and formulate a strategy in relation to these potential infringements. In such cases, an opposition may be necessary.

Where possible we recommend doing some preliminary searching prior to your application, to avoid or minimise likelihood of disputes. Disputes regarding trade marks can be incredibly complex, requiring the advice of an intellectual property expert to achieve the best possible outcomes. At MBIP, our team of Trade Marks Attorneys have extensive experience in Australian trade mark dispute matters, such as oppositions and removal actions. If you require advice on such a matter, feel free to contact our firm today via out Book a Meeting form and a member of our team will contact you to discuss your case.