“My Other Bag” (hereinafter referred to as “MOB”) is a US brand which manufactures and sells eco-friendly cotton tote bags. On these bags of MOB, imprints of various designer bags such as Louis Vuitton ("LV"), Prada, Mulberry, etc. are displayed without authorisation from the brand owners. LV asserted that use of its designs on MOB’s bags led to trademark and copyright infringement, dilution of trademarks and false designation of origin leading to unfair competition.
Image of LV’s bag: the imprint of the bag is in use since 1896; alongside is an image of MOB’s bag provided for comparison
The trademarks that LV is specifically referring to is the “Toile Monogram design” which features the letters L & V interlocked with one another and 3 distinct flowers adopted by the company in 1896! LV alleged that, MOB had used their trademarks to create designs that are likely to confuse the public at large and make them believe that the MOB products emanate from LV. In spite of LV’s attempts at settlement, MOB was found to not only continue selling infringing products but also began manufacturing additional infringing products. LV prayed to the Court for preliminary injunction in addition to being awarded monetary damages.
LV’s prayer for permanent injunction was refused by the District Court on the grounds that the use of the image on MOB’s bags was a mere parody and thus did not amount to trademark infringement. LV appealed, however the Second Circuit Court ruled against it based on 3 primary reasoning’s:
- the caricature drawings and replacing Louis Vuitton's famous interlocking “L” and “Vs” with interlocking “M,” “O” and “B” created a stark difference;
- the consumer market for both the brands was poles apart; and
- Louis Vuitton was unable to produce convincing evidence that MOB’s products caused confusion amongst consumers.
In an appeal to the Supreme Court, the court concurred with the views of the lower courts and concluded that MOB’s bags were mere parodies and thus came under the ambit of ‘Fair Use’.
Compiled by: Adv. Sachi Kapoor | Concept & Edited by: Dr. Mohan Dewan
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