Trademark Caselaw | Peru | Louis Vuitton’s Trademark Cancellation Overturned

Earlier this month, the Specialized Chamber on Intellectual Property at INDECOPI’s Competition and Intellectual Court (the Chamber) overturned the cancellation of trademark registration owned by Louis Vuitton Malletier (Louis Vuitton) for LV (and Design), in class 4.

Louis Vuitton’s trademark LV (and Design)

Registration Certificate No. 193340 covers “oils and greases for industrial purposes (that are not edible oils and fats and essential oils); lubricants; dust controlling compositions; fuel (including gasoline for engines) and lighting materials, oils for lighting, candles and scented candles, kit for manufacturing candles, namely, lighting wax, paraffin and wicks for candles, wicks for lighting“ in class 4.

The Trademark Commission at INDECOPI cancelled the subject registration at the request of Argentinian company Ypf S.A., which filed for its cancellation on July 10, 2020, arguing that Louis Vuitton had used the subject mark in connection with the goods covered in the registration, during the previous three years, and that it had a legitimate interest for such a filing, since the Trademark Commission had refused its trademark application for I ULTRA LV, for being confusingly similar with the subject mark.

Upon defending its registration, Louis Vuitton argued and produced evidence attesting to the fact that the subject mark was well-known in connection with luxury goods associated with elegance and style, and that it was among the most valuable brands in the world, which should preclude its cancellation. This argument was rejected by the Trademark Commission, which found that the well-known status of Louis Vuitton’s mark was irrelevant to the cancellation proceeding and thus cancelled its registration, since it produced no evidence supporting its effective use. Louis Vuitton appealed the Trademark Commission’s decision.

In its decision of October 4, the Chamber ruled in favor of Louis Vuitton and found that the Trademark Commission erred in failing to analyze the argument regarding the well-known status of trademark LV (and Design) before ruling on its cancellation, and alluded to precedents from the Justice Court of the Andean Community, i.e. 269-IP-2016 and 458-IP-2017, according to which well-known status breaks with the real and effective use principle, meaning that a trademark will not be denied the well-known status thereof, where it is not being used in any of the members countries of the Andean Community where protection is sought.

The Chamber stated that trademark cancellations, and the rules concerning evidence of use, should be adjusted when dealing with well-known marks and that the registration of such marks cannot be cancelled due to lack of use thereof. This because, even in the case of a registration being cancelled, the beneficiary of such cancellation would not be able to secure a registration, as it would be precluded, based on the risks of confusion or dilution associated with the well-known mark. As for the onus to produce evidence in these specific cases, the Chamber found that although use of a well-known registered mark is not mandatory, its holder must produce evidence of its well-known status in, at least, one of the of the members countries of the Andean Community.

As a result, and since the Trademark Commission was under the obligation to analyze Louis Vuitton’s well-known status argument, the Chamber admitted the appeal and overturned the cancellation, ordering that the case said office issue a new decision, where it analyzes whether trademark LV (and Design) should be deemed a well-known mark, or not, to determine if its registration could be cancelled.

Click here to read the Chamber’s decision and contact us for additional information.