Trade marks: Louis Vuitton case could lead to rush at the ITC



30 May 2012


An initial determination recommending a general exclusion order against counterfeit Louis Vuitton products could send trade mark owners flocking to the International Trade Commission.

Louis Vuitton has described itself as "the first luxury goods company to seek redress at the ITC". The company filed a motion for summary determination of a Section 337 (intellectual property) violation naming several respondents based in China, and requested a general exclusion order barring all goods in violation of eight of the company's trade marks. The trade mark registrations at issue are for Louis Vuitton's popular Toile Monogram Marks, which are used on the company's handbags, luggage and accessories.

Chief Administrative Law Judge Charles Bullock granted the request in March, saying that because a pattern of Section 337 violations has been identified and it is difficult to determine the source of the infringing products, a general exclusion order – as opposed to the more common limited exclusion order, which offers remedy against infringing goods made by the named respondents only – is appropriate.

France

eBay ruling has an upside for IP owners. France's highest court has ruled in the latest round of a battle between online auction site eBay and LVMH. The ruling could result in a smaller fine for eBay – but it does offer some hope to brand owners to want to sue internet platforms. The Court de cassation ruled that ebay.uk was not protected from liability, even though it is based outside France, on the grounds that it markets itself to French consumers.

China

China reveals 599 new well-known trade marks. The Trademark Office of China's State Administration for Industry and Commerce last month released a list of the 599 trade marks that have been declared well known in administrative proceedings. Japanese companies Yamaha (motorcycles) and Komatsu (earthworks equipment, construction) are among those whose marks have been awarded the status.

Australia

Google fights back over AdWords ruling. Google has filed for special leave to appeal an Australian appeal court ruling that found its AdWords programme misleading. Last month the Full Federal Court ruled in a case brought by the country's consumer watchdog, the Australian Competition and Consumer Commission, which argued that AdWords, which publishes advertisements on search results pages based on the search term, was deceptive.

India

Indian Customs sanctions grey market goods. A circular from India's Central Board of Excise and Customs has advised Customs officers that parallel imports do not violate the Trade Marks Act and that they should allow the products through. This position conflicts with a ruling from the Delhi High Court in March that held that parallel imports of Samsung printers destined for Singapore infringed the Korean company's trade mark rights.


A US appeals court last month declined to answer whether aesthetic functionality is a valid defence to trade mark infringement in a dispute that has pitted Maker's Mark Distillery against Diageo North America and Tequila Cuervo La Rojena. The Sixth Circuit Court of Appeals ruled that Maker's Mark has exclusive use of its signature red dripping wax seal.

The New Zealand government has released proposals to enforce plain packaging for cigarettes as part of a campaign to eliminate smoking by 2025. Tobacco companies have already stated their opposition.

The US Supreme Court declined to review a decision to prevent renewal of the Havana Club trade mark in the US. Pernod Ricard, which sells the rum, immediately said it had registered the mark Havanista with the USPTO to sell its drink in the US if and when the Cuban embargo is lifted.

Fu Shuangjian, deputy secretary of the National Copyright Administration, told reporters that Proview is the owner of the iPad trade mark in China. He said Apple appeared to have failed to comply with Article 39 of the Trademark Law, which outlines the procedure to register a trade mark transfer.


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