At the end of 2015, in a pioneering judgement, the Taiwan Intellectual Property Court (Court) determined for the first time that the signature groove design of the travel suitcase leader Rimowa is a well-known symbol of the product under the definition of the Fair Trade Act.1” About nine months later in September 5 of 2016, the same court in another decision, No.104-CivilPublicAppeal-9, confirmed that a defendant’s use of the groove design pattern on their own luggage products is infringement upon Rimowa’s well-recognized well-known symbol.
A symbol is a general term which refers to any indication, trademark or other symbols that can represent the characteristics of a product, including a product container, packaging or the appearance of a product, according to the legislative rationale provided by the Fair Trade Commission. Therefore a “symbol” prescribed and protected by the Fair Trade Act is also understood as “trade dress” protection. This case signifies a milestone in trade dress protection by means of civil remedy under the Fair Trade Act. The Court has established a consistency of opinion in finding the well-known status of the appearance on Rimowa’s products and the infringement of groove design being used on travel cases of others.
As the Plaintiff, Rimowa filed a lawsuit with arguments centered at the idea that the groove design acquires distinctiveness which is protectable under the Fair Trade Act. Defendants countered that the disputed groove design had appeared in the relevant market for a significant period of time and was not commonly known enough to general consumers in order to disqualify its protectability. Defendants also countered that the pricing and sales channels were also different.
The Court began by analyzing the elements of groove design and evidential materials supporting its fame, the Court then found Rimowa’s groove design being a well-known trade dress. Rimowa had long been repetitively conveying its concept of groove designs to suitcases consumers by the consistent use on their products and through many available marketing channels. Groove pattern has become able to indicate Rimowa as the authentic source of a particular brand of suitcases.
The Court concluded that the defendants’ act of selling suitcases with an appearance similar to Rimowa’s product constitutes an infringement under Article 22 of the Fair Trade Act. By observing each infringing suitcase compared with the Rimowas in different time and places, they resemble with each other although some different elements exist. Such a resemblance may create a likelihood of confusion to relevant consumers as to the genuine source of the Rimowa’s products.
The Court also analyzed if any violation under Article 25 of the Fair Trade Act, which forbids the exercise of deceptive or obviously unfair conduct that is sufficient to influence the order of trade. A deceptive or obviously unfair conduct can be passing off other’s good will, high degree of plagiarization, or utilizing other’s efforts to promote its own products or services. As aforementioned, the Defendants’ use of the groove design pattern is an infringement of well-known trade dress. Plus, Rimowa’s groove design enjoyed a high degree of market strength and is widely recognizable among relevant consumers. Thus the defendants’ subsequent sale, marketing, and importation of infringing suitcases that are deemed dead copying is a plagiarization of Rimowa’s good will under Article 25, as the Court opined.
This case also features how the Court considered damage calculation under the Fair Trade Act. Unlike other laws of IP where some statutory calculation is specifically provided, such as multipliers of the unit sale price, the Fair Trade Act in its Article 31(2) only stipulated plaintiff’s claim basis as being “the monetary gain to [the] infringing person.” As reasoned in the judgment, because trade dress infringement is similar to trademark violation, the Court analogously adopted the multiplying factor under the Trademark Act to reach the damage amount.
Considering the foregoing, defendants’ use of groove design is determined as an infringement of trade dress. The Court granted an injunction prohibiting subsequent sales, transportation, importation, and exportation of the infringing products as well as awarding a nominal damage of NT$1,000,000 as claimed by the plaintiff. This case was then appealed to the second instance of IP Court by the defendants.