Vuitton fails to prevent use of monogram design

In Louis Vuitton Malletier v Dooney & Bourke Inc, the US District Court for the Southern District of New York has denied Louis Vuitton Malletier's request for a preliminary injunction against the use of a "multi-coloured monogram against a white or black background" on the defendant's competing handbags.

Vuitton manufactures, among other things, bags featuring variations of its famous LV logo and 'toile monogram' design. One such variation, the multicolour 'Murakami' monogram design, is made up of coloured LV logos interspersed in a repeating pattern with geometric shapes in various colours set against a white or black background. Dooney & Bourke Inc launched a line of its own bags featuring its DB logo (without geometric ornamentation) in a multicoloured array. Vuitton brought trademark infringement proceedings before the US District Court for the Southern District of New York against Dooney & Bourke, and moved for a preliminary injunction.

While the court found that its registered 'toile' design mark and its unregistered 'Murakami' design mark were inherently distinctive and had obtained secondary meaning and fame, Vuitton had not shown that consumers identified the use of multiple bright colours against a black or white background in connection with any design as exclusively emanating from Vuitton.

Applying the US Court of Appeals for the Second Circuit's Polaroid test, the district court found that the only resemblance between the bags was a similar choice of colour scheme (ie, multicoloured initials on white and black backgrounds). However, it pointed out that the Dooney & Bourke colours were "noticeably toned down" as compared to the Vuitton bags. Additionally, the court found other significant differences between Vuitton's and Dooney & Bourke's respective marks. Specifically, it stated that while Vuitton used an interlocking LV monogram interspersed with geometric shapes, Dooney & Bourke used a DB logo without any geometric shapes interspersed. Further, the Dooney & Bourke DB logo appears in an "appreciably smaller font size" than the LV logo design on the Vuitton bags. Finally, while the Vuitton bags "prominently display metal studs" and "gold-toned zippers", each Dooney & Bourke bag has a "multicoloured zipper" with a pink enamelled heart inscribed with the words 'Dooney & Bourke' prominently hanging from it by a leather strap. These numerous differences in the marks weighed against a finding of likelihood of confusion.

Additionally, the court found "striking" the almost complete lack of "real world" or actual consumer confusion shown by Vuitton. It was only able to produce a handful of emails from unidentified customers, despite the fact that the Dooney & Bourke bags had been on the market for a year. Vuitton's survey evidence attempting to show actual confusion was discounted as largely unreliable. Dooney & Bourke's rebuttal expert evidence was also afforded little weight.

For similar reasons, Vuitton's dilution and state law claims were also rejected by the court.

For a discussion of another decision from the same court, which came to a similar conclusion, see Vuitton fails to bag preliminary injunction.

Lara A Holzman, Alston & Bird LLP, New York