Rimowa wins legal battle against local companies over trade dress imitation

The leading German travel suitcase maker, Rimowa GmbH (hereinafter “Rimowa”) initiated an action with the Taiwan IP Court against five Taiwan-based companies, including Jia He Boutique (transliteration of Chinese store name: 加賀精品行), Lian Yin International Co., Ltd. (Chinese: 聯瑩國際有限公司), Y. C. Eason International Co., Ltd. (Chinese: 育丞國際有限公司), Leading Ming Co., Ltd. (Chinese: 冶亮實業有限公司), and Yuan Ta International Co., Ltd. (Chinese: 沅大國際有限公司), to allege that the five companies copied its “groove design pattern” which it has been using since 1950.  In this action, Rimowa not only claimed for damages in an amount of TWD1 million but also requested that the five companies should be enjoined from selling any kind of suitcase product bearing any appearance similar or identical to its signature groove design, which claim and request were both granted by Taiwan IP Court.  

Established since 1898 in Germany, Rimowa took the metal surface design of Lufthansa and Junkers airplane as reference for its groove design pattern with a concept to demonstrate that its suitcase products are suitable for air traveling.  The groove design used on Rimowa’s suitcase products has already earned its well-known status among relevant industries and consumers, served as an indication of the authentic source from Rimowa, and thus amounted to a trade dress representing the strong distinctiveness of Rimowa’s suitcase products.  Moreover, Rimowa has been investing huge amount of advertising expenses in Taiwan since 2010 to market all of its suitcase products as reported in famous magazines.  

Also according to Rimowa, the suitcase products made and sold by the five local companies, such as those under the brand names of “Eason” and “Leadming”, etc., bear parallel grooves of 1-inch width with creases among them, which design is strongly similar to Rimowa’s signature groove design.  In consideration of such similarity, Rimowa initiated an action with the IP Court asserting Fair Trade Act violation against the five local companies.  

The five local companies countered that Rimowa’s use of the groove design in dispute does not date back to the time of its brand establishment, and that  Rimowa’s groove design has no longer been the one used at the very beginning even though Rimowa has used it since 1950.  These companies also made other counter arguments that all their products come from brand new design and their creative design lie in the width of these grooves, the reflective folds, and wrap angle, the features that make these products different from Rimowa’s products simply with groove design.  In this regard, these companies asserted that their products are distinguishable by consumers and would not affect trading order.  

According to the IP Court’s holding, the groove design is the main characteristic for Rimowa’s products as campaigned in advertisements and Rimowa has established flagship stores and branch stores in Taiwan with the sales amounts surging from TWD742,850 in 2003 to TWD712,702,400 in 2013.  Besides, Rimowa’s suitcase products bearing the characteristic groove design have been well-received by celebrities.  Based on the foregoing, the IP Court decided that Rimowa’s groove design is able to indicate the authentic source of Rimowa’s products and thus recognized the groove design as a well-known trade dress.  Also, the IP Court sustained the five local companies’ violation of the Taiwan Fair Trade Act by selling suitcase products bearing the appearance similar to Rimowa’s groove design, thus granting an injunction prohibiting the five companies’ subsequent sale of any suitcase products carrying the similar appearance as well as awarding a damage of TWD1 million to Rimowa.  This case is appealable.  (September 2016)  

/CCS