Use of 'Louis **' infringes LOUIS VUITTON mark
The Seoul Central District Court (2004KaHab68781, December 9 2004) has ruled that a website owner called Park Hee-Jin who used the phrase 'Louis **' (in Korean characters) to describe imitation Louis Vuitton Malletier (LVM) products had breached Korea's trademark law.
LVM, the owner of the famous LOUIS VUITTON mark and a registration for that mark in Korean characters, brought a claim against Park based on his use of the term 'Louis **' on his website to sell second-hand purses, bags and belts that are imitation products marked with the LOUIS VUITTON mark. LVM requested an injunction to prevent the use of Louis (in Korean) whether or not it included the '**' element, as well as damages.
The term 'Louis **' has been in common use by Korean website owners following an earlier court ruling that traders who advertised their fake products as, among other things, 'Louis Vuitton style' and 'Louis Vuitton like' were in breach of unfair competition and dilution provisions of the Unfair Competition Prevention and Business Secret Protection Law. A number of Korean website owners were using the term 'Louis **' as a substitute for the LOUIS VUITTON mark, with the '**' portion suggestive of the two syllables of VUITTON. The district court has now indicated that this practice is also illegal.
The court first held that the sale of used imitation goods bearing the LOUIS VUITTON marks infringed LVM's trademark rights. Next, it stated that Park's use of the term 'Louis **' (in Korean) on his website was also trademark infringement. According to the court, 'Louis **' is clearly a substitute for the LOUIS VUITTON mark and is likely to be understood as LOUIS VUITTON by internet users. However, it dismissed LVM's claim that Park should be prevented from all use of the name Louis (in Korean). It ruled that when a mark consists of two or more words, each of the words generally has its own distinctiveness. However, as LOUIS VUITTON has always been used as a whole, consumers are unlikely to associate the separate use of either the name Louis or the name Vuitton with the LOUIS VUITTON mark.
The court ordered Park to stop manufacturing or selling fake goods and banned him from using the term 'Louis**' (in Korean) to advertise or market bags, wallets or belts.
Yoon Bae Kim, Kims and Lees, Seoul
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