Trendy clothing brand owner sentenced for trademark infringement

　Two infringers, Huang and Yan, cooperated to sell private branded products by “reappropriating with parody” well-known trademarks, such as, the LV mark, for which both infringers were apprehended and investigated in 2021.  Huang and Yan, however, continued selling such controversial products, which leads to a charge against them both for violation of the Trademark Act of Taiwan in 2023.  They affirmatively defended themselves that their act is the “parodistic imitation” of renowned trademarks without confusing or misleading consumers.  The Taipei District Court examined this case and determined that Huang and Yan “took a free ride” on these well-known trademarks to gain profits, and sentenced Huang and Yan each to six months and five months in prison, respectively, with the sentence commutable to a fine payment, and the two infringers retain the right to appeal this court decision.  

　According to the court decision, the infringer Huang is the responsible person of Gansta Creative Design Co., Ltd., and had been engaged in creating new designs based on well-known trademarks of fashion luxury brands, such as, LV, Gucci, Chanel, by adapting them and adding patterns of human figures or dolls and using the adapted trademarks on clothing and luggage items, etc..  He further had these products delivered to the other infringer, Yan, the responsible person of MF production co., for sale under the trendy brand, “MF BY G.C.D.C.” at physical or online stores.  

　The two infringers’ act alerted Louis Vuitton Malletier (hereinafter “LV company”) and LV company believed that the two infringers’ act constituted infringement upon their trademark right for the LV mark.  For asserting their trademark rights, LV company gathered evidence by purchasing products from the MF flagship store and also its online store and then filed a lawsuit against Huang and Yan for alleged trademark infringement and submitted authenticity examination report as evidence.  Other trademark proprietors involved in this case, including Burberry Limited, also filed separate lawsuits against the two infringers.  

　On May 11, 2021, the police seized a total of 2543 pieces of counterfeit products at the business premises jointly run by Huang and Yan and had these seized products passed to the Taiwan IPO for examination and comparison.  Subsequently it was determined that the words and the composition of the design as a whole adapted by the two infringers based on well-known fashion trademarks would cause consumers to mistakenly believe that the seized products were from the authorized manufacturer or under licensing or under franchisor-franchisee relation.  Also, the aforesaid confusion is more likely to occur especially when the products with adapted design are similar to the relevant genuine products.  

　Huang and Yan affirmatively argued that the patterns used on their products are “re-creation” of their own and are irrelevant to the eight fashion luxury brands involved in this case.  Based on such arguments, the two infringers believed that it is unnecessary for them to first obtain the trademark proprietors’ prior consent, and that their “parody” of these famous fashion trademarks is clearly distinctive and unlikely to cause confusion on the side of the public.  

　According to the court holding, parody or jokes are heavily tied to language and cultural background, which means that what is funny to one nationality may not necessarily be understood by another.  However, whether a trademark may or may not cause consumers confusion about the source of products or services under that trademark is usually and immediately determined at the sight of it.  Therefore, a successful “parodistic version of trademarks” should be up to the standard that consumers are able to “instantly recognize” the humorous, ironic, or critical nature of the parodistic version and clearly distinguish it from the original work.  

　The court further pointed out that the seized products do not have the aforesaid humorous, ironic, or critical characteristics and carry no cultural contribution or social value that overcomes the necessity of trademark protection.  On the contrary, the fact is that for promoting their products, the two infringers took a free ride on the fame of these fashion trademarks and disregarded the brand image built up by these victim companies.  Moreover, by so doing, the two infringers confused consumers and impeded fair trading order and further affected Taiwan’s international reputation for IPR protection.  In view of the foregoing, the judge sustained the two infringers’ trademark infringement as defined by the Trademark Act of Taiwan and therefore sentenced Huang and Yan each to six-month and five-month imprisonment, both of which sentences may be commutable to a fine payment of TWD180,000 and TWD150,000, respectively.  Both sentences are appealable.  (Released 2024.03.18)
/CCS