City Chain enjoined from using 'quatrefoil' device

In Louis Vuitton Malletier v City Chain Stores (S) Pte Ltd ([2009] SGHC 24, January 29 2009), the High Court of Singapore has ruled in favour of Louis Vuitton Malletier in a dispute involving the famous 'quatrefoil' designs.
Louis Vuitton's 'monogram canvas' design is registered as a trademark in many countries, including Singapore. The 'flower quatrefoil' and the 'flower quatrefoil diamond' are two of four constituent elements making up the monogram. The 'flower quatrefoil' and the 'flower quatrefoil diamond' are also registered as trademarks in Singapore.
Louis Vuitton has sold watches bearing the quatrefoil marks in Singapore since 2004. In 2006 City Chain Stores (S) Pte Ltd launched its Solvil watches, which bore a flower device.
Louis Vuitton commenced proceedings against City Chain for trademark infringement, passing off and dilution of its well-known trademarks, seeking an injunction preventing City Chain from further infringing its marks. Louis Vuitton claimed that City Chain's flower device was identical or similar to its trademarks and was thus likely to cause confusion. 
City Chain argued that the trademark used on its watches was SOLVIL. It claimed that the quatrefoil patterns were a common sign in trade, and were used merely as decoration on both Louis Vuitton's and its own watches. The average consumer would recognize the famous letters 'LV' imprinted on Louis Vuitton's watches as a trademark, but would see the quatrefoils as mere decoration. Moreover, the public would not consider the constituent elements of Louis Vuitton's monogram as trademarks because they were not used in a consistent manner.
The court held that while the quatrefoil was commonly used, this did not prevent it from being used as a trademark in the course of trade. As use of the flower device was in the course of trade, it was irrelevant that the device was used as decoration.
The court observed that confusion takes place where the public is led to believe that the defendant's goods emanate from, or are economically linked to, the plaintiff. In the present case, the flower device was identical to Louis Vuitton's trademarks or remarkably similar. It was not a defence to say that the word 'Solvil' was added to the watch face. Therefore, there was a likelihood of confusion and infringement was established.
The court also found that the three elements of goodwill, misrepresentation and damage necessary to establish passing off had been proved. With regard to goodwill, City Chain submitted that goodwill was concentrated in the monogram and that it would be difficult for the constituent quatrefoil marks to acquire their own goodwill. However, the court rejected this argument and held that there was no doubt that Louis Vuitton possessed substantial goodwill and reputation in Singapore. With regard to misrepresentation, City Chain claimed that its customers were not misled as to the origin of its watches. However, the court found misrepresentation and held that the issue was not confined to misleading City Chain's customers.

With regard to damage, Louis Vuitton claimed that its image of exclusivity would be diminished by the availability of lookalikes. The court took judicial notice of the fact that people get put off certain luxury brands because of the many cheap lookalikes available. The likelihood of damage was thus real.
City Chain accepted that Louis Vuitton's monogram was well known, but not its individual elements. However, the court found that the quatrefoil marks were distinctive in their own right. They would be as easily recognizable as the monogram by the public at large.
Louis Vuitton also claimed that the availability of watches in the mass market bearing the flower device would tarnish its image and give rise to a likelihood of confusion. City Chain alleged that tarnishment occurs where the conflicting mark is used in relation to goods which are "unwholesome, unsavoury, immoral or obscene". However, the court held that "cheapening the image of a luxury brand was as much tarnishing as associating it with unwholesome connotations". The court thus concluded that Louis Vuitton was entitled to injunctive relief.
Dedar Singh Gill and Jacqueline Baruch, Drew & Napier LLC, Singapore

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