In mid-April 2018, the Taiwan IP Court in second instance held a judgement in favor of RIMOWA, recognizing its signature groove design used on suitcase products as a well-known representation of goods (a.k.a “trade dress”), protectable under the Fair Trade Act. Tsai, Lee, & Chen represented RIMOWA in continuation of this legal dispute in appeal.
The Appellants were importers and retailers of luggage products which were manufactured and shipped from China. RIMOWA was determined to go after the infringers who have been selling counterfeit items bearing their trade dress, as this action is in line with its corporate policy of rectifying and establishing the legitimate rights of its signature symbol of goods in the luggage market. RIMOWA prevailed in the trial court, whereupon the infringing party brought the case to the appellate court.
The appellate court rendered a decision in concurrence with RIMOWA’s arguments. Most notably, the court granted RIMOWA’s request for a joint liability among all appellants and their respective legal representatives.
The court further elaborated that the legal system is designed in such a manner so as to not merely extend technical protections to intellectual property, but also to protect fairness, innovation and competition in the market. The purpose of keeping “well-known representation of goods” under the Fair Trade Act is to maintain a fair competition in the consumer marketplace and to avoid the commercial transaction order being undermined by passing off the good will of others or by the substantial copying of the goods of others. As such, as long as the groove design is sufficient to demonstrate its innovation to such an extent that consumers can rely upon it as an identifier of the origin of goods, it can be taken into consideration for the scope of the well-known representation of goods. As for technical features such as the size, ratio or material, they are not criteria for making such determination.
The appellants failed in a dilution counterargument that RIMOWA’s signature groove design was weakened due to additions of more elements. The court opined that such an issue does not exist because the classic series remains as a way to identify the source of the goods in question. Furthermore, the introduction of new fashionable elements such as glamorous gems in new lines of products to attract a consumer’s attentions is a common, yet effective strategy for companies to diversify and expand the scope of their businesses.
Moreover, the appellants’ defenses alleging functionality of the groove as well as the appellee’s abuse of the rights did not convince the court. The court explained that RIMOWA did not monopolize all kinds of geographical combination of stripes, surfaces (be they concaves and convex), and flat faces on exteriors of luggage products. The signature groove design at issue has its own featured elements. Most importantly, RIMOWA never emphasized that it’s products possessed superior resistance against physical stress due to its design vis-a-vis designs from other companies. In other words, the groove design at issue is not an indispensable or necessitated functional design whose aim it was to strengthen the exterior of the luggage made by RIMOWA . Therefore, in the absence of functionality as the principle factor, so long as a representation in trade meets the requirements stipulated under the Fair Trade Act, it shall be protected under the same Act. The court further elaborated that whereas the Trademark Act, Patent Act, and the Fair Trade Act all belong to the same regime of intellectual property laws, there is no prior or mutually exclusive relation in terms of hierarchy of law among the three. Any specific law should grant protection so long as the target to be protected meets the legal requirements specified by that law, irrespective of whether the protection is overlapped by various laws. The fact that a feature is not granted any patents or registered as a trademark is irrelevant.
After the above analysis refusing all of appellants’ defenses, the court further reviewed RIMOWA’s claim for damages. The court awarded the appellee’s monetary claim for NTD 1,000,000 (approx. USD 33,900) jointly and severally liable by appellants and their respective legal representatives.
To conclude, the court in the second instance affirmed opinion of the trial court and also concurred with RIMOWA’s arguments and defenses. RIMOWA’s signature groove design on its luggage collections was recognized undeniably as a well-known trade dress under Fair Trade Act without doubt of dilution. The court once again made clarifications on the different legislative goals of the respective intellectual property laws and explained the fact that whether an object at issue does not satisfy the threshold for enjoying a given IP right under one specific law does not necessarily exclude it from protection under another.