Local company to pay damages to LV for intentional imitation

Louis Vuitton Malletier Corporation (“LV Corporation”) filed a complaint against Eitsetien International Co., Ltd. (Chinese: 伊澤田國際股份有限公司; “Eitsetien”) for the latter’s imitation of LV Corporation’s famous registered EPI design mark (characterized by an embossed wave-like pattern; hereinafter the “EPI” mark) on the bags sold under the brand name “iki2” created and established by Eitsetien for bags and shoes products.  In the criminal aspects of this case, the prosecutor conducted investigation and determined to not indict Eitsetien on the ground the Eitsetien did not hold criminal intent.  In the civil aspects, however, the IP Court sustained Eitsetien’s infringement upon LV Corporation’s EPI mark on the ground that the surface pattern used on the iki2 bags is highly similar to LV Corporation’s EPI mark, and thus Eitsetien should pay TWD870,000 to LV Corporation in damages and run a notice of apology in local newspapers. 

According to LV Corporation, their products sold under the EPI mark have been presented to the market for thirty years since 1985 and the EPI mark has been successfully registered as a trademark in Taiwan, US, British, France, China, and other countries.  Also, LV Corporation provided statistics figures showing that the sales amount of LV Corporation’s bags under the EPI mark accumulated from 2011 through 2014 was TWD465,000,000 in total.  The foregoing makes it clear that the EPI mark has been well recognized by Taiwan consumers and the Taiwan IP Court also affirmed the well-known status of the EPI mark in Taiwan.  With such affirmation, Eitsetien’s infringement turned apparent by its sale of bags under iki2 brand name with the surface pattern similar to the EPI design mark and the types of bags similar to LV Corporation’s Noe bucket bags and Speedy bags.  For the aforesaid infringement, LV Corporation claimed damages against Eitsetien in an amount of TWD5.22 in damages and requested that Eitsetien should run a notice of apology in local newspapers. 

Eitsetien made defensive arguments that their bucket bags and Speedy bags were sold under the obviously indicated mark, “iki2” and also that the horizontal embossed pattern was used simply as adornment, instead of a mark, and thus it would not cause confusion among consumers.  

Based on the facts that LV Corporation has the exclusive right to use the EPI mark and the EPI mark amounts to a well-known one, and that the bucket bags and Speedy bags sold under the iki2 mark all bear the surface pattern strikingly similar to the EPI design mark on the front and back sides and bottom thereof, and also that LV Corporation also sells these classic Noe bucket bags and Speedy bags under the EPI mark, the IP Court confirmed Eitsetien’s intention to imitate LV Corporation’s EPI mark.  Besides, what really drew consumers attention was the horizontal embossed wave-like pattern all over the iki2 bags, as opposed to its “iki2” mark which was presented in rather small and non-obvious font on those iki2 bags.  The foregoing shows that Eitsetien used the embossed wave-like pattern as a mark.  In this regard, the IP Court established Eitsetien’s trademark infringement and ordered it to pay TWD870,000 to LV Corporation and run a notice of apology in local newspapers.  The case is appealable.  (May 2016)  

/CCS