Louis Vuitton A Trademark Bully?
The BBC reported on a case where Louis Vuitton opposed an application to register LV Bespoke.
The case led to discussions on social media effectively arguing that famous brands that challenge a small business' use of a similar name are bullies. But how true is that perception?
Names are subject to trademark laws. Trademarks ensure consumers are not confused into buying from the wrong supplier. And they mustn’t believe that a brand they know has endorsed goods and services bearing a similar name.
So, names must be unique to every business. The trademark classification system is how the law achieves that. For example, POLO belongs to 3 different businesses. They operate in different categories: confectionery, cars and clothes. There’s no overlap between these categories, hence no confusion.
Well-known brands enjoy broader protection than the classes in which they’re registered. So, beware of using a similar name to that of a famous brand even if there is no overlap in your trademark classes. LV Bespoke was unlucky that their initials concerned LVMH.
Our name is how the world associates our business with what we do. If it's misused it'll confuse consumers into believing it’s us, or that we’ve endorsed something. That could create an impression about us that we don’t want.
Names are valuable property. Not registering a trademark lays you open to disputes. Unregistered trademarks have limited protection. If disputes arise, there's a need to establish who has earlier rights in a name. That's an expensive argument to win.
As the name you’re building your brand around is valuable property, it's sensible to register it. If you've done so, others infringe your rights if they use your name.
Many SMEs don’t check to establish whether a name they're using is available. They assume checking domain names is enough. But trademarks determine the right to use names.
You're presumed to have checked the trademark registers before choosing your name. If you've not done so, you risk infringing on someone’s trademark rights.
SMEs can avoid legal disputes by engaging lawyers to do due diligence on a name they intend to use. Then register it as a trademark to secure ownership of the name before starting your business.
Note you should do a search even if you want to use your own name. If you're Paul Smith, a fashion designer, you may not call your fashion design business Paul Smith. It’s not honest and concurrent use. You would be taking advantage of the well-known designer's name recognition.
Famous brands are aware of the negative impact trademark disputes have on them. So, they tend to pick their battles with care. They sometimes lose the argument, but engaging in a trademark dispute doesn’t make them a bully.
Someone suggested trademark laws should change to make allowances for SMEs. According to them, SMEs need a special system that excuses sole-traders. But that's unworkable. The problem is that SMEs don't understand the complexities of naming.
They can avoid disputes and minimise risks by seeking advice from a lawyer early on. And regard it as a necessary cost of doing business.
