Weeding out the competition

Big brand owners often get a bad press when they’re involved in David and Goliath trade mark disputes, however, policing the Trade Mark Register is an integral part of strengthening a business’ brand identity. 

Keeping the Register clear of all other conflicting trade marks is crucial for the reason that if a genuine competitor ever came along, it is important that brand owners could claim and substantiate their monopolies. How far they should go, however, is a fine line and Louis Vuitton may have crossed it in this particular case. 

There is also an important distinction in trade mark law which is often overlooked by the general public – that between registration and use of a trade mark. Whilst Louis Vuitton sought to strengthen its registered monopoly in LV and challenged the Osbornes’ trade mark application through the UK Intellectual Property Office, this is not the same as litigating their use through the UK Courts. It is highly unlikely Louis Vuitton will demand that the Osbornes stop using their trade mark and sue them for trade mark infringement. The same can be said if they had won because, after all, if there is no confusion between the two sets of offerings what commercial harm can be done to its fashion business? 

What the applicants, Lawrence and Victoria Osborne, had applied for were metal items for use in gardening projects such as trellises, steel supports for plants and other bespoke gardening items as well as various types of plants. True, there might have been a technical legal overlap between Louis Vuitton’s registered rights and the Osbornes’ application but the businesses are so far removed commercially that it should have been possible to come to an amicable resolution long before the parties became embroiled in this two year fight. Perhaps they tried.  

In rejecting all of Louis Vuitton’s arguments the Hearing Officer also dismissed allegations the Osbornes were riding on the coat tails of Louis Vuitton’s reputation.  Not only did he consider the business activities of the two parties to be too remote from each other, the Hearing Officer also highlighted the Osbornes’  ‘due cause’ for use of their trade mark since they were only using and trying to register L and V as the initials of their first names (‘due cause’ being a counter-argument when it is alleged you are taking unfair advantage of a reputation).  

The fashion giant could appeal the decision but personally I would advise against it.