The case Louis Vuitton Malletier v. Dooney & Bourke, Inc., No. 454 F.3d 108 (2d Cir. 2006), dated 30 June 2006, before the U.S. Court of Appeals for the Second Circuit, concerns a dispute over trademark infringement, unfair competition and trademark dilution, relating to the distinctive design of Louis Vuitton Multicolore bags and Dooney & Bourke’s “It-Bag” collection.
When does similarity constitute trademark infringement?
Louis Vuitton → ← Dooney & Bourke
Louis Vuitton challenged the “It-Bag” collection, alleging trademark infringement, unfair competition and trademark dilution.
The District Court recognized the LV Multicolore mark as protectable, but found that Dooney & Bourke’s use of the sign did not create a likelihood that consumers would confuse its products with those of Louis Vuitton.
The Court of Appeals emphasized that the likelihood of confusion must be assessed in light of all the circumstances of the marketplace, taking into consideration how the products are presented and sold, consumer perception, and the factors that may influence the connection consumers make between the two marks.
In particular, the Court of Appeals emphasized that consumers do not necessarily have both bags in front of them at the same time between them are apparent in a “side-by-side” comparison does
not, by itself, exclude the possibility that a consumer, relying on their memory of the mark, may form an association or experience confusion.
The Court also emphasized the importance of the overall commercial impression created by the marks on consumers, rather than merely the individual elements of the design.
Although the Court of Appeals established an important principle in favor of Louis Vuitton in 2006, the legal battle ended two years later with a complete turn of events.In 2008, the Federal Court in New York issued its final decision in favor of Dooney & Bourke, finding that, despite the marketplace context, there was no real likelihood of consumer confusion, based on three main reasons:
Completely different letters and symbols(LV, DB)
Different use of colors, For LV, each logo featured a single color, whereas in DB’s design, the letters within the same monogram appeared in different colors.
Lack of evidence of actual consumer confusion, Louis Vuitton did not provide evidence or surveys demonstrating that consumers had actually been confused in the marketplace.
IP INSIGHT “What the buyer remembers is the overall impression, not the small details. Thus, the marketplace context and consumer memory determine everything.”
