LVMH successful on appeal in counterfeiting case

By means of Resolution No 2788-2014/TPI, the Administrative Court of Appeals has revoked Resolution No 2234-2013/CSD-INDECOPI of the Peruvian Trademark Office (INDECOPI) and declared that the infringement action filed by Louis Vuitton Malletier (LVMH), which had been rejected at first instance, was well-founded.

On November 9 2012 LVMH filed a trademark infringement action against Evelyn Marianne Chauca Cruz for importing purses bearing the sign LX and floral designs. LVMH claimed that these signs were confusingly similar to its LV and floral designs trademarks, as well as the monogram mark that combines the aforementioned trademarks, which cover goods in Class 18 of the Nice Classification, including purses. LVMH alleged that the goods were clearly counterfeit, as they copied its trademarks.

The INDECOPI admitted the claim, but denied the injunction requested by LVMH. A second injunction was requested by LVMH, but was again denied by the INDECOPI; as a result, the goods could not be seized, thus completing the importation procedure into Peru for commercialisation.

On August 7 2013 the INDECOPI issued Resolution No 2234-2013/CSD-INDECOPI, which rejected the claim filed by LVMH on the basis that the LX sign and floral designs on the imported goods were not sufficiently similar to the LV trademark, the floral design marks and the monogram mark. Therefore, the importation of the goods did not constitute trademark infringement.

LVMH filed an appeal on August 19 2013 on the basis that the LX sign and the floral designs were a copy of the LV trademark, the floral design marks and the monogram mark registered in its name, and that they would create a likelihood of confusion among consumers. 

Almost exactly a year after the appeal was filed, on August 21 2014 the Administrative Court of Appeals issued Resolution No 2788-2014/TPI-INDECOPI, which revoked the first instance resolution on the basis that the LX sign and the floral designs were confusingly similar to the monogram trademark, which combines the LV mark and the floral design marks.

The Court of Appeals considered that the LX sign and the floral designs displayed on the goods were not confusingly similar to LVMH's LV trademark and floral design marks on their own, but that they were confusingly similar to the monogram trademark.

The Court of Appeals found that there was a likelihood of confusion among consumers and, therefore, declared that the claim against the importer was well-founded. It ordered the importer to pay a fine of 3 UIT, as well as the legal fees and expenses of LVMH.

The importer could file an administrative civil claim before the Civil Administrative Court requesting the nullity of the Court of Appeals within three months of notification. At time of writing, no such appeal had been reported.

María Inés Herrera, BARLAW-Barrera & Asociados, Lima