At the end of 2015, in a pioneering judgment, the Taiwan Intellectual Property Court determined that the signature groove design that appears on luxury suitcase-maker, Rimowa’s products is a well-known symbol of the product under the Taiwanese Fair Trade Act. More recently, in September 2016, the same court confirmed this decision in a separate matter, holding that Defendant, Deseño’s use of the groove design pattern on its own “Occa” collection of luggage amounts to infringement of Rimowa’s well-known symbol.
In accordance with Taiwanese law, a “symbol” generally refers to any indication, trademark or other characterization that can represent the characteristics of a product, including a product container, packaging or the appearance of a product. If this sounds familiar, it is because a “symbol” protected by the Fair Trade Act is largely akin to a design protected by the U.S. doctrine of trade dress, a type of trademark law that extends to the configuration (design and shape) of a product itself.
The Rimowa v. Deseño case – and others like it, such as the one Rimowa filed early this year against luggage-maker, Vikland, and subsequently won – signifies a milestone for symbols under the Fair Trade Act, a Taiwanese antitrust statute. Brands hoping to rely on such protections can find solace in the fact that courts have consistently found that Rimowa’s products are of protectable status based on their appearance, namely the signature groove design, which the German brand has used since 1950.
In its most recent legal battle, Rimowa – which was acquired last month by Louis Vuitton’s parent company, LVMH Moet Hennessy Louis Vuitton – filed suit against Taiwan-based luggage company, Deseño, alleging that the company copied its groove design, which has acquired distinctiveness, and is thereby protectable under the Fair Trade Act.
Siding with Rimowa, the IP Court held that the company’s “groove design” is, in fact, a well-known symbol subject to protection under the Fair Trade Act. Specifically, the court held that the groove pattern serves as an indication to consumers that Rimowa is the authentic source of the particular suitcases, as the company enjoys a high degree of market strength and is widely recognizable among relevant consumers.
With this in mind, the Court found that the outer surface of the Deseño suitcase was strongly similar to the Rimowa “groove design,” which is likely to cause confusion amongst customers and/or lead customers believe Rimowa is in some way connected to or affiliated with the Deseño brand and its products; this is the key inquiry in trademark-related matters. The Court concluded that Deseño’s act of selling suitcases with an appearance similar to Rimowa’s product constitutes an infringement under Article 22 of the Fair Trade Act, which states: “No enterprise shall, for the purpose of competition, make or disseminate any false statement that is able to damage the business reputation of another.”
The Court also looked to Article 25 of the Fair Trade Act, which forbids the exercise of deceptive or obviously unfair conduct that is sufficient to influence the order of trade, finding that Deseño’s sale, marketing, and importation of infringing suitcases that are deemed to be “dead copies” of Rimowa’s grove pattered bags is a violation of Rimowa’s good will under Article 25.
According to Crystal J. Chen, a partner at Tsai, Lee & Chen Patent Attorneys & Attorneys at Law in Taipei, “This case also features how the Court considered damage calculation under the Fair Trade Act. Unlike other laws of IP where some statutory calculation is specifically provided, such as multipliers of the unit sale price, the Fair Trade Act in its Article 31(2) only stipulated plaintiff’s claim basis as being ‘the monetary gain to [the] infringing person.’ As reasoned in the judgment, because trade dress infringement is similar to trademark violation, the Court analogously adopted the multiplying factor under the Trademark Act to reach the damage amount.”
In connection with the court’s finding, Rimowa President & CEO Dieter Morszeck, who is “very satisfied” with the outcome stated: “This judgement proves that consumers are aware of the brand character of the Rimowa groove design.” He further noted, “Rimowa will continue defending this most important feature of its brand identity against copycat and infringers.