Louis Vuitton flexes trademark reputation of LV monogram in EU 

Louis Vuitton has successfully opposed an EU trademark application for ‘XL Sporting’ based on the trademark reputation of its iconic LV monogram. The EUIPO’s Opposition Division found that the differences between the signs were eclipsed by similarities in the arrangement of the two letters, thereby creating a similar visual overall impression, as Florence Chapin explains. 

Trademarks ‘with reputation’ enjoy a broader scope of protection under EU trademark law, with a growing body of case law protecting luxury trademarks against any imitation that could take unfair advantage of their reputation. 

On 21 October 2024, the EUIPO’s Opposition Division reinforced this case law in its decision in Case B 3 206 933, concerning an opposition filed by Louis Vuitton Malletier against the EU trademark application for ‘XL Sporting’ by Chinese company Dongguan Xing Long Sporting Goods. 

Establishing trademark reputation in the EU 

In November 2023, Louis Vuitton opposed an application for a semi-figurative trademark, depicted left, in Class 25. The opposition was based on its LV monogram, depicted right, which is registered in Class 25, citing a likelihood of confusion between the marks. 

A full set of arguments was put forward, as well as elements relating to the reputation of the LV monogram, to support the fact that these are well-established elements in the luxury sector. Louis Vuitton pointed out that registration and use of the opposed trademark could mislead consumers as to the origin of the goods and, therefore, undermine the distinctiveness of its own marks.  

In its decision, the Opposition Division considered likelihood of confusion and damage to trademark reputation: 

• Likelihood of confusion  

In its analysis of likelihood of confusion, the Opposition Division considered the degree of visual, phonetic and conceptual similarity between the conflicting trademarks, judged primarily based on the general perception of the average consumer.  

It decided that the signs were visually similar to an average degree; aurally similar to a low degree; and conceptually not similar.  

The signs contained a combination of two letters, which were arranged in a highly similar manner. Further, one of those letters was depicted nearly identically in the signs. The difference in the contested sign’s additional verbal element – ‘sporting’ – was less relevant, as it was, at best, a weak element.  

Consequently, the differences were eclipsed by the clear similarities in the arrangement of the two letters, which contributed significantly to creating a similar visual overall impression between the signs, with the Opposition Division concluding that the signs were sufficiently similar to lead to a likelihood of confusion  

• Damage to trademark reputation  

One of the crucial aspects of this decision was the recognition of the reputation of Louis Vuitton's trademarks. It is settled case law that a trademark with a high degree of repute enjoys wider protection, even where the likelihood of direct confusion is low. In this case, the Opposition Division held that the trademark reputation of Louis Vuitton's marks could influence the consumers' perception of the mark XL Sporting, by associating it with the world of luxury represented by Louis Vuitton.  

In addition to the ‘likelihood of confusion’ claim, Louis Vuitton also put forward the argument of dilution. The company argued that the use of similar motifs by a less exclusive brand could tarnish its own reputation. This notion of dilution, or undermining of the distinctive character of the mark, is important because it considers that the use of a similar graphic or stylistic element in a nonluxury context can damage the image of a luxury brand. 

The Opposition Division found this argument admissible, considering that the XL Sporting mark could be perceived as an extension or imitation of Louis Vuitton’s mark, which would be detrimental to its luxury image.  

Key takeaways from Louis Vuitton’s opposition strategy 

Louis Vuitton's strategy was based on the accumulation of tangible evidence of the fame, extensive commercial use and dilution potential of its mark.  

The evidence showed that Louis Vuitton was founded in France in 1854 and is currently one of the largest luxury goods companies in the world. In 1896, to avoid imitations, a complex pattern, called the ‘Monogram canvas’, was created. It involved various motifs and a graphical representation of Louis Vuitton’s initials ‘LV’, as can be seen on various pictures from promotional materials and catalogues.  

The considerable amount of evidence submitted by Louis Vuitton showed beyond any doubt that the LV mark has been subject to long-standing and intensive use, and is generally well known in the relevant markets as the initials of Mr Louis Vuitton. This trademark appears on many of the company’s products, from trunks, bags and other leather goods to women’s clothing.  

Advertisements featuring world-famous personalities and celebrities were also submitted. Louis Vuitton’s arguments were also supported by rankings of the world's leading luxury brands citing Louis Vuitton’s position, and by previous decisions of national courts, national offices and the EUIPO.  

Unsurprisingly, the Opposition Division ruled in favour of Louis Vuitton, thereby refusing the registration of the trademark XL Sporting. 

How to maximise trademark reputation in the EU 

This decision highlights the importance of protecting well-known trademarks and how luxury brands can use arguments such as the risk of dilution to prevent the registration of similar trademarks.  

In addition, it serves as a reminder that consumer perception is central to assessing the likelihood of confusion, particularly in the fashion and luxury sectors. It also reinforces the case law concerning protection for luxury trademarks against imitations or signs that could take unfair advantage of their reputation.  

Finally, it highlights the EUIPO's increasing focus on the issue of trademark dilution, which may encourage other luxury companies to proactively protect their designs against uses that could damage their prestigious image.  

To find out more about trademark reputation or the opposition procedure, speak to your Novagraaf attorney or contact us below. 

Florence Chapin is a Trademark and Design Attorney at Novagraaf in France. 

This article first appeared in WTR Daily, part of World Trademark Review, in November 2024. For further information, please go to www.worldtrademarkreview.com.