From The BBC:
A small garden supply business called L V Bespoke recently won its fight to keep its name against the French luxury fashion house Louis Vuitton. Experts say such cases have increased “hugely” in the past 18 months as major brands seek to protect their intellectual property. But what actually happens when a multi-national firm comes knocking at your door?
Before the Covid-19 pandemic, Victoria Osborne ran a holiday letting business and her husband Lawrence worked in construction.
“When the pandemic arrived, both of our incomes were wiped out literally overnight,” says Mrs Osborne.
Amid what she describes as a “mad panic” the couple, who were renovating their home in Reepham, near Norwich, focused on their garden and began growing their own food while former boat builder Mr Osborne tried his hand at making metal plant supports.
The supports turned out well. So well, in fact, the couple wondered if others would be willing to pay for them. They were.
The business grew from selling the supports on Gumtree and at car boot sales to being featured by the Royal Horticultural Society.
The couple had named the business using their own first initials, and L V Bespoke was born.
The trademark was sent off to the Intellectual Property Office (IPO), which receives more than 150,000 registration requests each year, in December 2021. An examiner carried out initial checks and no issues were raised.
But when the application to register the L V Bespoke trademark was made public, Louis Vuitton Malletier objected in March 2022 via lawyers in London claiming the trademark impinged on its intellectual property.
“We were very shocked and surprised,” says Mrs Osborne. “We thought it was a practical joke by one of our friends.
“It was just ludicrous to think they had the rights to the letters “L” and “V” and there was no comparison to be made between our goods and theirs.”
They sought legal advice almost immediately and decided to stick to their guns.
IPO Tribunal Judge Matthew Williams found in the couple’s favour, deciding Louis Vuitton’s opposition had failed “on all grounds”.
Although Louis Vuitton has not responded to the BBC’s requests for comment on the case, Jamie Muir Wood, who represented the firm during the tribunal told the hearing that Louis Vuitton’s trademark contained the letters “L” and “V” and that it was understood those letters “stand for Louis Vuitton”.
He said the Osborne’s logo “contains the same two letters, in the same order, followed by the word ‘bespoke'”. It also contains some slight figurative decoration.
“Conceptually, we say that there is essentially identity or very high similarity because both signs refer to a brand LV,” he told the hearing.
Melanie Harvey, a legal director at Birketts LLP and a chartered trade mark attorney, says the Osbornes’ case is far from unique.
She says in the past 18 months there has been a “huge” rise big firms seeking to protect their trademarks. She says clothing businesses, champagne makers and high end brands were particularly busy protecting their identities at the moment.
Link to the rest at The BBC and thanks to C. for the tip.
PG was disappointed that the judge didn’t order LV to pay all of the defendant’s legal bills. Awarding attorney’s fees to the winner in a civil lawsuit helps to discourage foolish and overreaching suits, particularly against defendants who are not particularly wealthy.
I don’t know what provisions European courts have – but in the US, I would also be pressing for formal sanctions against the plaintiff and their lawyers for bringing a frivolous lawsuit.
Paying legal costs is a minor hit for the wealthy corporation – but lawyers pay attention to being sanctioned, as it hits their entire practice. Makes most of them think twice about what advice they give to their clients.
(Why is Google on a motorcycle kick lately???)
Good points, W.O.
The courts in the UK do not have an equivalent of 28 U.S.C. § 1927, which allows a US federal judge to issue sanctions against an attorney or party that “vexatiously multiplies” proceedings. To my knowledge, there are no reported decisions imposing § 1927 sanctions for trademark claims, for the simple reason that judges understand that the “must defend or lose against all other potential or actual infringers” nature of trademarks moves the goalposts for when a complaint is so unreasonable that it merits sanctions.
This is distinct from misconduct during litigation. In the UK, that’s one of the elements that is included in determining the appropriate costs to award the prevailing party (and, important note: In the US, “costs” is defined much more narrowly and excludes attorney’s fees except where specifically provided by statute). In the US, that’s ordinarily a separate motion, under Fed. R. Civ. Proc. 11 in federal court, and equivalents in all state courts. All this requires is that a specific document submitted to the court under an attorney’s signature was not either substantially justified (after investigation) or presenting a good-faith argument to change the relevant law. The key point here is that Rule 11 doesn’t apply to parties except for those few papers that the party has to sign.
In theory, this should all be unnecessary. The legal profession proclaims that it’s self-regulating. I’m… unpersuaded.