General Court Upholds Louis Vuitton's Opposition - Medabots Trade Mark Battle in Europe

Louis Vuitton Prevails: A Closer Look at the 'CALIFORNIA Dreaming' Trade mark Battle

On 11 October, the General Court of the European Unio issued judgment in its case T - 542/22 opposing the famous manufacturer Louis Vuitton Malletier and the entrepreneur Andrés Carlos Martín Rodrigo. The dispute concerned the application for registration of the trade mark "CALIFORNIA Dreaming by Made in California" by Mr. Rodrigo, which was opposed by Louis Vuitton on the basis of its earlier trade mark "CALIFORNIA DREAM" for perfumery and cosmetic products in the Benelux region.

Mr Rodrigo had applied in April 2020 for the registration of “California Dreaming by Made in California” as an EU trademark, for a wide range of cosmetic, makeup, hygiene and beauty products, as well as the commercial services related to them under classes 3, 35 and 44 of the Nice Classification.

The Parisian company Louis Vuitton Malletier opposed this based on the earlier word mark “CALIFORNIA DREAM”, registered in May 2020 for various perfumery and body hygiene products (Nice class 3).

In the earlier stages of this case, the Opposition Division ruled in favour of Louis Vuitton, considering that the signs in question were highly similar and covered similar or identical goods and services, leading to a risk of confusion preventing the registration of the “California Dreaming by Made in California” mark. This decision was subsequently upheld by the Board of Appeal of the European Union Intellectual Property Office (EUIPO). The case reached the General Court of the European Union, who handed down its decision last week.

• On the Similarity of Goods and Services

The Court highlighted the fact that goods and services are not listed in identical classes of the Nice Classification cannot be a definitive barrier to establishing similarity between them. The critical factors in this case was the substantial relationship and complementarity between the services offered under "CALIFORNIA Dreaming by Made in California" (services related to and retail for health and beauty products under Classes 35 and 44) and the goods covered by the earlier "CALIFORNIA DREAM" trade mark (health and beauty products under Class 3), added to the facth that they were destined to the same consumers and sold through similar distribution channels. Such complementarity meant that the goods and services were indeed similar for the purpose of determining likelihood of confusion between the two marks.

• On the Similarity of the Signs

The Court determined that he presence of additional elements in the later mark (i.e. “Dreaming by Made in California)  was not sufficient to create a distinct impression on the average consumer as the central elements which were the words California and Dream were identical, both visually and conceptually. In this case, although the trade mark applied for was figurative, the stylized elements were minimal and inadequate to distinguish it from the earlier "CALIFORNIA DREAM"

The General Court therefore refused Mr. Rodrigo’s appeal and stated that his mark could indeed not be registered due to its similarity with Louis Vuitton’s earlier trade mark covering similar services, which generated a likelihood of confusion between the two marks.

This case highlights valuable lessons into trade mark protection, highlighting that the absence of identical goods and services classifications doesn't preclude similarity when a substantial connection exists between the offerings and assessing potential confusion requires an in-depth examination of the practical connection between the goods and services offered to the public, even when classifications differ. In addition, it underscores the importance of visual, phonetic, and conceptual similarity of trademarks is can be easily demonstrated in cases of figurative marks consisting of and minimal stylized elements which may not be sufficient to differentiate marks effectively.

Legal Dispute in Europe over the Medabots Trade Mark

If you're one of those nostalgic people who remember the Japanese animated series Medabots ('Medarots' in Japan) from the nineties, then this news is likely to catch your interest.

The story began when Imagineer, the Japanese company behind Medabots, expressed its interest in re-releasing the video game in Europe after several years of inactivity. However, they came up against an obstacle: the Spanish entrepreneur Kevin Comadrán de Frutos had registered “Medabots” as a European trade mark in 2018, with the intention of using it for his NFT game project.

This project, similar to the popular ‘Axie Infinity’, allows users to play and earn money by owning and managing NFT robots. The dispute was over whether Comadrán had the exclusive right to use the Medabots trade mark in Europe or whether Imagineer could use it for its own project.

During the court hearing held with the Commercial Court of Alicante, Comadrán argued that Imagineer was infringing his trade mark rights and sought to stop the distribution and marketing of games branded Medabots in Europe.

In July 2020, the Court ruled in favour of Comadrán and ordered Imagineer to stop using the trademark in the region. However, the same court reversed its decision in November 2021 and ordered the cancellation of Comadrán’s registered trade mark in the European Union on the basis that Comadrán had acted in bad faith by registering the mark primarily to block Imagineer, the legitimate owner of the Medabots brand globally, from using its own brand name in the EU market, despite having no prior rights or legitimate interest in using the Medabots name. This was deemed an improper and illegitimate purpose for registration under EU trade mark law. Comadrán appealed the decision, but this appeal was dismissed on 15 September 2023, consolidating Imagineer’s position and reaffirming its intellectual property rights of Medabots.

The future of this dispute is still uncertain, but Imagineer has made it clear that it will continue to take legal action against the misuse of the trade mark by Comadrán in the European Union. We can therefore expect that more is to come in this story.