Supremacy of Well-Known Trademark in Hong Kong

12.17.2020

In a recent Hong Kong High Court decision that awarding “LOUIS VUITTON” the status of well-known trademark, it has evidenced the supremacy of protection offered under this supreme status.

Louis Vuitton Malletier, commonly known as Louis Vuitton or shortened to LV, is a French fashion house and luxury goods company founded in 1854 by Louis Vuitton. Louis Vuitton is one of the world’s leading international fashion brands; it sells its products through standalone boutiques, lease departments in high-end department stores, and through the e-commerce section of its website. LV main products include luxury trunks and leather goods to ready-to-wear, shoes, watches, jewelry, accessories, sunglasses and books.

In 2013, Louis Vuitton discovered the Hong Kong trademark application for “ ” in Class 33 for “Aperitif, cocktail, wine, alcohol (beverage), brandy, Japanese rice wine, whiskey, cooking wine, sake, alcoholic beverages containing fruit” (application no.301323242) by WONG SAUYING (the Defendant) and took out infringement action against the Defendant and its company.

LV has 3 causes of action against the Defendants: (i) infringement of the 1st Plaintiff’s well-known trademark which is protected under the Pairs Convention and the Trademarks Ordinance, Cap.559 (“TMO”); (ii) passing-off; and (iii) claim for an order that the 2nd Defendant do withdraw his trademark application no. 301323242 for “XAVIER LOUIS VUITTON” in Class 33 (“the TM Application”).

The Hong Kong High Court has in late 2019 granted a decision in favor of Louis Vuitton in all claims and made a declaration confirming that the Plaintiff’s registered trademarks with the name “LOUIS VUITTON” as referred to in the Plaintiff’s pleading are well-known trademarks.

Beauty of Well-Known Trademark Recognition
It is extremely beneficial for trademark registrants to apply for recognition of their trademarks as well-known trademarks in Hong Kong. This not only protects the value of the applicant’s brands, but also acts as defensive measure to prevent squatters from attempting to register for the mark due to its cross class protection offered. Obtaining such a well-known mark recognition may be very beneficial for the trademark owner because it not only helps the company to enhance the strength, quality and reputation of its brand, but also in certain recent incidents that the court extended the protection scope of well-known trademark to internet use because it deemed a well-known trademark shall enjoy all the commercial interest brought by itself.