Following an unsuccessful trademark battle in the EU for its famed Damier checkerboard trademark, Louis Vuitton can claim a win in its trademark lawsuit between the Louis Vuitton Moet Hennessy-LVMH owned Hublot and Los Angeles-based jeweler Chris Aire. You may recall that Aire filed suit against 17 watch brands, including Rolex, LVMH on behalf of Hublot and Louis Vuitton, Breitling, and Chopard, for trademark infringement in connection with the term “Red Gold” in 2010.
In April, Hublot’s legal team moved for summary judgment (essentially asking the court to rule in its favor before the parties go to trial) on Aire’s trademark infringement claim, as well as its own counterclaim, which seeks to invalidate Aire’s mark, claiming that “red gold” is a generic term that has been used by jewelers to describe a red-tinted gold alloy, and should be cancelled. Well, according to our friends over at World IP Review, the US District Court for the Central District of California has done just that.
In a decision last week, the California court ruled that a trademark for ‘Red gold’ is generic, thereby, reversing an earlier decision that said Chris Aire Fine Jewelry & Timepieces had a valid trademark for the term, and thus, a valid claim against luxury goods giant LVMH.
In October 2014, Judge Dolly M. Gee of the U.S. District Court for the Central District of California declined to dismiss the case, holding that the issues need to be decided by a jury and stating that while "red gold" was certainly a generic term when Aire started using it in 2003, there is a chance it has become distinctive as a result of Aire's use of the mark
To this, LVMH asked the higher Ninth Circuit to weigh in on whether Aire's “Red Gold” mark is, in fact, valid, holding that under the prevailing understanding of trademark law, once a mark becomes generic (aka loses its distinctiveness), it is thereby devoid of trademark protection, which cannot be reclaimed. LVMH argues that "almost every court across the county" has endorsed the idea that once a trademark becomes generic, it can never be used as a trademark. “There are strong policy reasons supporting the 'once generic, always generic' rule this court has seemingly rejected,” LVMH further argued in its motion. “To grant trademark status to a generic term essentially gives a single user a monopoly and prevents all other manufacturers from accurately identifying their products.”
Chris Aire said last week’s decision is a “disappointing surprise”.