Louis Vuitton has been handed a second favorable ruling in the past several months in its efforts to fight fakes in Taiwan. The Taiwan Intellectual Property Court ruled in favor of the Paris-based luxury brand in May after Louis Vuitton filed suit against Yi Ze Tian International Co., Ltd., parent company to fashion brand iki2, alleging that it was selling bags that bore Louis Vuitton’s EPI trademark in violation of Taiwanese Trademark Law and Fair Trade Law.
In the most recent case, Louis Vuitton, which is notoriously protective of its valuable intellectual property, filed a similar suit against 2R International Co., Ltd. for selling bags bearing its EPI trademark and ones that closely resembled its famous Noe and Neverfull styles. The Taiwan Intellectual Property Court upheld the validity of the fashion house’s EPI mark, despite a previously-issued ruling siding with 2R International. (Note: the EPI trademark, pictured above, consists of a textured leather characterised by interleaving ridges and valleys applied to the whole or predominant area of the surface of the product, with the ridges being of a darker shade and the valleys of a lighter shade, thus giving it an immediately recognizable two-tone effect).
Prior to the case at hand, Louis Vuitton filed an unsuccessful criminal trademark infringement action against 2R International. In that case, the Prosecutor’s Office of the Shihlin District Court concluded that the allegedly infringing ripple design (the design that mirrors the Louis Vuitton EPI trademark) that appeared on the 2R International products was merely a product appearance design – as opposed to an infringing trademark use – and that Louis Vuitton had failed to present sufficient evidence showing that customers were likely to be confused by 2R’s use of the ripple design.
According to Belinda Lan of the Chen & Chen Law Office, “To safeguard its legitimate rights and combat against unlawful infringing activities, Louis Vuitton filed another civil action against 2R in Taiwan Intellectual Property Court claiming that 2R’s unauthorized use of Louis Vuitton’s EPI trademark has not only seriously damaged its legitimate right and weakened the identification of Louis Vuitton’s trademark but it has also damaged Louis Vuitton’s fame and reputation.” Louis Vuitton further argued that 2R’s actions resulted in trademark infringement in violation of Taiwan Trademark Law and Fair Trade Law.
Despite 2R’s argument that customers would not be confused because its allegedly infringing activities centered on use of a product design and not a source indicating trademark, the Taiwan Intellectual Property Court ruled in Louis Vuitton’s favor. In its decision the court held that Louis Vuitton’s EPI pattern has been a famous trademark in China for decades thanks to the fashion house’s long term use and promotion of the specific EPI mark. The court found the ripple pattern of the 2R’s bags to be extremely similar to Louis Vuitton’s trademark-protected EPI pattern, and even though the bags at issue bore 2R labels, the court held that the products may still cause confusion among customers.
As such, the court ordered 2R to make a public apology to Louis Vuitton by way of a half page ad in the Economic Daily News, and to pay a hefty damages amount.
This ruling fits squarely within Louis Vuitton’s increased efforts to fight fakes. As of last year, LVMH Moët Hennessy Louis Vuitton, for instance, which owns Christian Dior, Givenchy, Loewe, Marc Jacobs, and Louis Vuitton, among others, stated that “[it has] taken extensive actions in China, Korea, Thailand and Italy, among other places” in the past several years in particular, to counter to sale and manufacture of infringing and counterfeit goods.
The group has also amped up its anti-counterfeiting efforts in Dubai, partnering with Dubai’s Department of Economic Development in an effort to curb the proliferation of counterfeit goods in Dubai and the greater United Arab Emirates. In 2015, the parties signed a memorandum of understanding to co-operate on protecting the Paris-based design house’s intellectual property rights and combatting counterfeiting both online and physical markets. Louis Vuitton is the first luxury fashion brand to sign such an agreement in the course of partnerships developed by the Department of Economic Development.
According to a statement from the luxury conglomerate: “The luxury industry is particularly hard-hit by the counterfeiting of goods, which unlawfully takes advantage of the prestige of its brands and harms their tradition, identity and image. As part of its broader brand protection policy, the fight against this problem – often linked with organized crime – is one of the LVMH Group’s priorities. The Group coordinates these anti-counterfeiting actions, particularly involving relations with the authorities in different countries, or actions taken directly against counterfeiters. Some sixty people at various levels of responsibility work full time on anti-counterfeiting, in collaboration with a wide network of outside investigators and a team of lawyers.”