Louis Vuitton stops use of infringing design

The Beijing First Intermediate People's Court has granted an injunction preventing an individual, Wang Jun, from using a registered design on the grounds that it contained elements that were identical or similar to trademarks owned by Louis Vuitton.

Louis Vuitton holds Chinese registrations (dating from 1985 and 1996) for the following four trademarks in connection with goods in Class 18 of the Nice Classification:

• a markin Chinese characters;
  
  
• a figurative mark consisting of the initials LV;
  
  
• a figurative markrepresenting a white stylized flower on a black background; and
  
  
• a figurative markrepresenting a black stylized flower.

Wang applied to register a designcontaining words and devices that were the same as, or substantially similar to, Louis Vuitton's trademarks (Application 02367907.7). The registered design was published on October 8 2003.

In February 2004 Louis Vuitton filed an invalidation action against Wang's design before the State Intellectual Property Office. In 2006 the office held that the design was valid. In April 2007 Louis Vuitton appealed to the Beijing First Intermediate People's Court, seeking an injunction preventing Wang from using the design.

In March 2008 the court issued a decision in favour of Louis Vuitton, holding that:

• Louis Vuitton's rights in the relevant trademarks had priority over Wang's rights in the registered design;
  
  
• Wang's design contained elements that were identical or similar to Louis Vuitton's trademarks;
  
  
• The subject matter of the design (ie, a handbag) was similar to the goods covered by Louis Vuitton's trademarks; and
  
  
• The relevant public was likely to be confused into thinking that Wang's goods were those of Louis Vuitton.

Consequently, the court concluded that use of the registered design by Wang would be considered as an infringement of Louis Vuitton's trademarks under the Trademark Law. Accordingly, the court granted the injunction and made an order for costs against Wang. However, Wang's design will remain on the register.

Philip Tsang, Marks & Clerk Hong Kong Incorporating Lloyd Wise, Hong Kong