Taiwan Court Affirmed Burberry’s Victory in Trademark Infringement Action On Appeal

In its decision rendered on March 20, 2025, Taiwan’s Intellectual Property and Commercial Court (the “IPC Court”) sided with Burberry Limited, affirming that LAICARFORE FASHION CLOTHING LIMITED COMPANY (“Laicarfore”) and ANIDA INTERNATIONAL CO., LTD. (“Anida”) should be liable for infringing the fashion brand’s well-known stripes icon (no.00906192 and no. 00905930, see below).

The defendants, Laicarfore and Anida, are vendors of dresses, shirts, skirts, coats, pants, and the relevant accessories. According to the records, Laicarfore and Anida contracted with factories in China for the supply of apparel products, and then imported and resold them through their own online platform (https://www.laicarfore.com.tw/) under the brand “Anita Su x LaiCarFore”. In around October 2021, Burberry discovered that the defendants were selling clothing bearing similar stripes icon on its website (See below). 

Given that Laicarfore had been sued by and settled with Burberry for trademark infringement for a couple of times, and that Laicarfore once again breached its written promise not to infringe Burberry’s trademark, Burberry decided to sue both Laicarfore and Anida for damages in the IPC Court. On July 31, 2024, in the first instance level, the IPC Court ruled in Burberry’s favor, finding Laicarfore and Anida jointly liable for trademark infringement, and awarding Burberry NT$ 3.98 million as damages, including NT$ 3 million as liquidated damages. Both Laicarfore and Anida appealed.

On appeal, Laicarfore and Anida argued that the stripes displayed on their products should not constitute trademark use, and that consumers will not be confused. On March 20, 2025, the IPC Court affirmed the finding of infringement of trademark, but reduced the liquidated damages to NT$ 2 million, finding the original awarded damages too excessive. The total awarded compensation became around NT$2,98 million. The IPC Court’s reasons are as follows:

1.    By examining the stripes and patterns displayed on the accused products, it is clear to the IPC Court that the background color similarly is beige, and the arrangements of thick and thin stripes resemble Burberry’s way of arrangement of red, black, and white stripes. The overall visual impression of the icon presented on the accused products is similar to Burberry’s aforesaid famous stripes logo.

2.    While there are other decorative elements presented on the accused products, these elements are randomly placed and not located in the most dominant position. In other words, consumers would still consider the colorful stripes the most dominant elements in the accused products.

3.    Although Laicarfore and Anida contended that the way they presented the color stripes should not constitute trademark use, the IPC Court disagreed, noting that the colorful stripes were clearly shown on Laicarfore’s and Anida’s website, and visible to general consumers when they shopped and purchased the products. As such, there should be intents on the part of Laicarfore and Anida to attract consumers by using similar icons on the accused products, which should constitute act of trademark use.

4.    On issue of damages, after considering that the defendants have made partial payments to compensate Burberry, that the defendants’ illegal profits have been forfeited, and the actual damages incurred upon Burberry, the IPC Court opined that the original award of NT$ 3 million as liquidated damages was too excessive. As such, the IPC Court exercised its discretionary power under Article 252 of Civil Code and reduced the liquidated damages to NT$ 2 million only.

Source:

113-Ming-Shan-Shan-Zi No. 16 (IPC Court, March 20, 2025), see: https://judgment.judicial.gov.tw/FJUD/data.aspx?ty=JD&id=IPCV,113%2c%e6%b0%91%e5%95%86%e4%b8%8a%2c16%2c20250320%2c1

 

Article 252 of Civil Code: “If the agreed penalty is disproportionately high, the court may reduce it to a reasonable amount.”