Rimowa Wins a Lawsuit Against Local Company over Trademark Infringement

The German well-known manufacturer of suitcases and luggages, Rimowa GmbH (hereinafter “Rimowa”) initiated a civil action with the Taiwan IP Court to allege trademark infringement against a local company, KGT International Corp. (hereinafter “KGT”) by reason that KGT uses its “Rowana” mark (with the English word circled in an oval frame) on traveling suitcases and sells such suitcases online and on TV shopping channels and that the similarity between the “Rowana” mark and Rimowa’s RIMOWA mark could cause confusion among consumers.  The IP Court ruled in favor of Rimowa and ordered KGT to stop using the “Rowana” mark and also pay damages to Rimowa in the amount of TWD3,350,000.

According to Rimowa, their brand name and RIMOWA mark were derived from the first two letters of Richard Morszeck Warenzeichen (RIchard MOrszeck WArenzeichen), the responsible person at that time.  The RIMOWA mark has been recognized as a famous mark that represents one of the world leading brands of quality suitcases because Rimowa’s suitcase products are solid, durable, and elegant.  The alleged similarity between the “Rowana” mark and the RIMOWA mark exists in their common oval frames each with six English letters including “R”, “O”, “W”, and “A” and beginning with “R” and ending with “A” inside in horizontal arrangement.  Such similarity would cause consumers to erroneously recognize them or form a mistaken belief on consumers that the two marks are in licensor-licensee or franchisor-franchisee relationship.

To defend itself from the infringement allegation, KGT asserted that the two marks in dispute are the results of different design concepts and the idea of the “Rowana” mark came from the Arowanafish raised and that the “Rowana” mark has been successfully registered as a trademark.  Also, KGT stressed that the RIMOWA mark is represented in simple printed letters, instead of stylized ones, and the difference between the two marks in appearance will not cause consumer’s confusion.

As indicated in the Taiwan IP Court’s holding, established since 1988, Rimowa has a total of 14 points of sale in Taiwan, including flagship stores and special counters established in department stores, and their products have been well-received among celebrities.  In addition, Rimowa’s total business turnover reached TWD0.7 billion or more in Taiwan and consumers in Taiwan have been familiar with the brand name Rimowa, and thus the RIMOWA mark amounts to a well-known trademark.

The IP Court sustained Rimowa’s allegation that KGT infringes upon Rimowa’s trademark right in the RIMOWA mark based on the similarity between the two marks which results from the facts that what KGT has used is the “Rowana” mark with the six English letters circled in an oval frame (while the oval frame is absent from the one KGT has registered with Taiwan IPO), and that the two marks in dispute both begin with the letter “R” and end with “A”, and also that the two marks in dispute are both used on traveling suitcases and suitcases, and thus such similarity is likely to cause confusion among consumers. 

Based on the foregoing holding, the IP Court ruled that KGT shall never use the “Rowana” mark with an oval frame on traveling suitcases and suitcases nor promote their products on electronic media and the Internet and KGT shall pay to Rimowa TWD3,350,000 in damages.  This case is appealable.  (September 2015)
/CCS