LV successful in its infringement lawsuit against bootleg restaurant

On June 28, 2024, Taiwan’s IP and Commercial Court (“IPC Court”) sided with French giant Louis Vuitton (“LV”), finding that the defendant, “Bootleg Creativity Co. Ltd.”, infringed LV’s famous trademarks (See below).

 

In the lawsuit, LV alleged that the interior design, decorations, merchandise, and items displayed in the defendant’s restaurant (see below), all feature LV’s iconic monogram and trademarks without its prior license. As such, defendant’s use shall constitute trademark infringement under Article 68 and 70 of Trademark Act.

The defendant explained that all the accused products were sourced from MF Production Co., a company that provides bootleg merchandise under its own brand “MF BY GCDC”. Defendant argued that customers should be able to distinguish the products, because these products are bootlegs that serve as parody of LV’s brand.

The IPC Court did not find for the defendant, reasoning that:

1.    To defend based on parody, defendant’s use has to meet the following requirements: 1) demonstrating nature of entertainment based on satire or parody, and in the meantime creating contradictory comparison;

2) upon seeing the parody, the consumers could immediately perceive of the referred trademark;

3) the consumers could clearly distinguish the parody use from the referred trademark without any likelihood of confusion;

4) the parody use is so necessary for the public interest that freedom of expression would outweigh the protection of trademark; and

5) there is no improper use that may harm the reputation or distinctiveness of the famous trademark.

2.    Based on the above framework, the IPC Court finds the defendant’s use does not meet the aforesaid requirements. The degree of similarity between the defendant’s use and LV’s famous trademarks is high, and, upon examining the products displayed in the defendant’s restaurant, the IPC Court notes LV’s trademarks are all placed in the most dominant portion. In other words, consumers could rarely notice the presence of “MF BY GCDC”, let alone form comparison between the defendant’s use and LV’s trademarks. Besides, except for the voluminous use of LV trademarks in its products, the defendant has provided no explanations whatsoever as to what exactly satirical or parodical message that its use intends to convey.

3.    Since defendant is not exempt from trademark infringement liability, and there is likelihood of confusion caused by the defendant due to the similarity between defendant’s use and LV’s famous trademarks, the IPC Court holds that LV is entitled to injunctive relief and monetary remedy.  

In conclusion, the IPC Court overrules the defendant’s parody defense, grants LV’s motion for injunction, and awards LV NT$ 1,375,431 for damages.    

 

Source:  Case no.: 112-Ming-Shang-Su-Zi No.7, IPC Court (https://judgment.judicial.gov.tw/FJUD/data.aspx?ty=JD&id=IPCV,112%2c%e6%b0%91%e5%95%86%e8%a8%b4%2c7%2c20240628%2c1) 

Note 1: MF Production Co. was also found infringing LV’s trademarks by the IPC Court earlier this year (See: https://judgment.judicial.gov.tw/FJUD/data.aspx?ty=JD&id=IPCV,111%2c%e6%b0%91%e5%95%86%e8%a8%b4%2c35%2c20240327%2c1 (111-Ming-Shang-Su-Zi No. 35, IPC Court))

Note 2:

Article 68 of Trademark Act

Infringement of registered trademark
Any of the following acts, without consent of the proprietor of a registered trademark, constitutes infringement of the right of such trademark:
(1)Using a trademark which is identical with the registered trademark in relation to goods or services which are identical with those for which it is registered;
(2)Using a trademark which is identical with the registered trademark and used in relation to goods or services similar to those for which the registered one is designated, and hence there exists a likelihood of confusion on relevant consumers; or
(3)Using a trademark which is similar to the registered trademark and used in relation to goods or services identical with or similar to those for which the registered one is designated, and hence there exists a likelihood of confusion on relevant consumers.
Any person who, without the consent of the proprietor of a registered trademark, manufactures, sells, possesses, displays, exports, or imports labels, tags, packaging, containers, or service-related articles that bear trademarks the same or similar to said registered trademark of the identical or similar goods or services in the course of trade for their own use or for others, shall also be deemed an infringer of the right of such trademark.

Article 70 of Trademark Act

Acts deemed infringement
Any of the following acts, without consent of the proprietor of a registered trademark, shall be deemed infringement of the right of such trademark:
(1)Knowingly using a trademark which is identical with or similar to another person’s well-known registered trademark, and hence there exists a likelihood of dilution of the distinctiveness or reputation of the said well-known trademark; or
(2)Knowingly using words contained in another person’s well-known registered trademark as the name of a company, business, group or domain or any other name that identifies a business entity, and hence there exists a likelihood of confusion on relevant consumers or a likelihood of dilution of the distinctiveness or reputation of the said well-known trademark.