Vuitton fails to bag preliminary injunction

In Louis Vuitton Malletier v Burlington Coat Factory Warehouse Corporation (2004 WL 1161167), the US District Court for the Southern District of New York has refused to grant a preliminary injunction to the plaintiff in relation to its infringement claim against Burlington Coat Factory Warehouse Corporation, a discount department store chain.

High fashion apparel manufacturer Louis Vuitton Malletier challenged Burlington's sale of a line of beaded handbags marketed under the name Pengyuan. The exterior surface of the bags was (i) covered in a hand-beaded design, and (ii) decorated with the letters 'NY', and "an assortment of shapes, including circles, diamonds and flowers". The designs were arranged in a criss-cross pattern on a black, white or copper-coloured background. When initially marketed, the Pengyuan bags also bore tags bearing the letters 'LVTN' as product codes and were sold under the heading "LVTN" on Burlington's website. Burlington subsequently removed the LVTN letters from both the tags and the website.

Vuitton asserted that the Pengyuan bags infringed its 'toile' designs and its unregistered multicolour 'Murakami' monogram designs, which featured "entwined 'LV' initials with three motifs - a curved diamond with a four-point star inset, its negative and a circle with a four-leaved flower inset". Vuitton brought claims of trademark and trade dress infringement, counterfeiting, false designation of origin, unfair competition and trademark dilution under the Lanham Act, the New York General Business Law and common law.

The US District Court for the Southern District of New York refused to issue a preliminary injunction based on a finding that Vuitton was unlikely to succeed on the trademark and trade dress infringement claims if the case went to trial. Critical to the court's determination were the different markets in which the bags were sold: Vuitton's bags were identified with "exclusive, upscale department stores" and "A-list celebrity" consumers, while Burlington described itself as a discount store for "price-conscious" consumers.

The court noted that its analysis of the Lanham Act claims also extended to its consideration of Vuitton's claims of trademark infringement and unfair competition under New York common law and concluded that Vuitton had failed to prove a likelihood of confusion between the Vuitton designs and the Pengyuan bags, and had also not shown evidence of bad faith on Burlington's part.

Finally, the court stated that Vuitton's claim of trademark dilution under New York law was unlikely to succeed, reiterating that the Pengyuan handbags were "very different" from Vuitton's designs and would not create any negative association in consumers' minds with Vuitton's products.

Virginia S Taylor and Heather Ann Forrest, Kilpatrick Stockton LLP, Atlanta