“Louis Vuitton has invested millions of dollars and decades of time and effort to create consumer recognition in [its many] trademarks,” the Paris-based design house asserts in a new lawsuit, accusing a New York-based wholesaler of “willfully using [those marks] without [its] consent or authorization” in order to “improperly trade off and reap the benefits of the extensive goodwill associated with the Louis Vuitton brand, and Louis Vuitton’s world famous design marks.”
According to the complaint, which was filed in a New York federal court late last week, Louis Vuitton alleges that “rather than going to the effort and expense of developing and creating their own unique, source-identifying marks and designs,” i-Fe Apparel has been “knowingly and intentionally … marketing, promoting and selling apparel products through its New York City showroom, various industry trade shows, its website and its e-commerce wholesale storefront … apparel products with virtually identical marks and/or designs to Louis Vuitton’s most distinctive and popular design trademarks.”
As such, the 164-year old brand has asserted false designation of origin and unfair competition claims, as well as a total of 15 claims for trademark counterfeiting, infringement and dilution.
The number of trademark claims asserted by Louis Vuitton – a clear demonstration of the brand’s careful strategy of protecting its Toile Monogram print, which it first began using in 1896 – is one of the most interesting takeaways in this otherwise straightforward counterfeiting and infringement lawsuit.
Louis Vuitton comes up with a total of 15 causes of action for federal and common law trademark infringement, counterfeiting, and dilution by asserting claims in connection with the Toile Monogram (its signature pattern of interlocking "LV” initials interspersed with geometric shapes) as a whole, but also for the individual elements of its world-famous monogram.
Specifically, Louis Vuitton makes separate claims for federal and common law trademark infringement, federal and common law trademark dilution, and trademark counterfeiting for the Toile monogram as a whole, the “LV” logo mark, and the flower mark, giving rise to a total of 15 separate causes of action.
By maintaining trademark registrations and common law protection for each of these individual design elements, as well as the Toile Monogram as a whole, Louis Vuitton is able to turn what might otherwise be a single claim of federal trademark infringement into three separate claims, with the same going for the other infringement, dilution, and counterfeiting claims. This means that the design house will be entitled to greater monetary damages if (or better yet, when) a court finds that such infringement, etc. has occurred.
But more than that, this range of protections also grant Louis Vuitton greater leeway to attack infringers should they make any changes or modification to their depiction of the monogram, itself, such as by only using certain elements – say, the flower designs – but leaving out others, such as the “LV” logo design.
In the case at hand, since i-Fe Apparel replicates the monogram as a whole, including the “LV” logo and the flower prints, Louis Vuitton is able to make each separate counterfeiting, infringement, and dilution claims.
The fashion house is seeking injunctive relief (which would serve to immediately and permanently bar i-Fe from selling any infringing products) and monetary damages, including any profits i-Fe made on products bearing Louis Vuitton’s trademarks, as well as statutory damages of up to $2 million per infringement and attorneys’ fees.
*The case is Louis Vuitton Malletier, S.A. v. i-Fe Apparel, et. al., 1:18-cv-10352 (SDNY).