SHARON YANG*

Preface

With fast fashion continuing to flourish, parodies inspired by or re-created on other renowned brands have become a tempting and effective way to create items in the fashion industry in the past few years, which have also spurred heated discussions on the legal issues concerned, especially in the aspect of intellectual property considering the blurred borderline between creation and imitation. In 2020, the Taiwan Intellectual Property Court (renamed as Intellectual Property and Commercial Court in July 1, 2021) has made a decision on the famous case brought by Louis Vuitton against the LG Household & Health Care for the products introduced by LG’s brand The Face Shop, which are parodied from LG’s iconic registered design patterns. This case could be an indicator of the local court’s opinions on trademark parodies and below we provide a brief introduction and review on this case.

Background

Louis Vuitton (“LV”) v The Face Shop ^[1] concerns the parody of registered marks, and the question of whether such parody constitutes trademark infringement.

LV’s marks cover fashion products of various kinds, including sunglasses, jewelry, clothing and accessories, amongst which the Speedy bag series (pictured below) launched in the year of 1930 are arguably the most famous. Having been recognized by the Taiwan Intellectual Property Court in 2015 as a classic collection, the series are well-liked by purchasers across the globe and remain as a bestselling item in Taiwan.

The Classic Speedy Bag

In 2003, LV worked in collaboration with artist Takashi Murakami from Japan to launch the Monogram Multicolor design, which immediately sparked a buying frenzy worldwide. The design subsequently entered into registration with the United States Copyright Office in 2004. Indeed, the original marks along with the Monogram Multicolor design and the Speedy bag series are all entitled to full protection under Taiwan’s Trademark Act, Copyright Act, and Fair Trade Act.
 

 The Monogram Multicolor Design.

Five of LV’s marks were at issue here:
 

The adverse party/the parodist is The Face Shop, an LG Household & Health Care Corporation’s subsidiary that focuses on cosmetic products. In October 2016, LV learned that The Face Shop had been using, without license or authorization from LV, a pattern that was highly similar to the exteriors of the Speedy bag and arguably identical to the Monogram Multicolor design on its co-brand products with My Other Bag, Inc., an American company. The pattern was applied to cushion foundation, canvas bags, and hand-held mirrors, which had been blatantly advertised as “famous items worth collecting.” LV brought the case to court here in Taiwan, claiming that The Face Shop’s unauthorized use was not only an infringement of its trademark rights, but has also violated the Fair Trade Act. The parodied products had been identified by LV as having emanated from a source other than LV itself.

The Face Shop’s Products in Dispute

Holdings

A person who engages in the parody of a registered trademark can raise defense if the means of parody is only a joking expression that fails to constitute “trademark use” defined in the local trademark law, or if the parody work is used as a trademark but will not entail confusion among the purchasing public.

If, on the other hand, parody had occurred under neither of these circumstances, the use of a parody mark could then take a toll on the most important function of the original mark, thereby giving rise to infringement.

Rationale

The similarity between The Face Shop’s products and LV’s marks is readily apparent and such similarity is not argued by either party. The question remaining then is whether the parody in this case is a valid defense against LV’s claim of infringement.

The court first affirmed the well-known status enjoyed by LV’s registrations, which was recognized by precedents ^[2], and regarded the products in dispute as use of trademark before moving on to examine whether the use is a valid parody. According to the Taiwan Intellectual Property Court, parodies or jokes are closely related to a country’s language, culture, social background, life experience and history, amongst other factors. The locals’ ostensible understanding of the literal meaning of jokes that are common to foreigners does not necessarily translate to their genuine appreciation of the humor that lies beneath them. Whether a trademark image will cause confusion and misunderstanding among relevant consumers is often decided immediately at the moment when the consumers come into contact with the trademark. Therefore, the court’s decision in the Louis Vuitton vs My Other Bag (MOB) case of the United States ^[3] ruled that a parody must clearly convey a message that it has no connection with the original work and consumers can perceive it as a mockery. The joke of "My Other Bag …" is derived from a tradition where Americans often apply car bumper stickers saying "my other car is a Mercedes (or other high end cars)” to cheap or otherwise high-mileage cars. American consumers that are exposed to The Face Shop’s canvas bags bearing the phrase "My Other Bag…" may appreciate its full context due to its obvious connection with the classic jokes. However, the same cannot be said about consumers in Taiwan because of the lack of the cultural background necessary to fully grasp the witty interest within the joke.

The court then shifted the focus to the likelihood of confusion or possibility of dilution of the distinctiveness and reputation of LV’s marks. It is affirmative that The Face Shop’s products constitute infringement under paragraph 3 of Article 68 ^[4] and paragraph 1 of Article 70 ^[5] of the Taiwan Trademark Act. The LV’s trademarks are extremely well-known when used on leather bags and leather goods, which enjoy a unique and prestigious reputation and are perceived as products of high quality. As the product design and advertising materials of The Face Shop’s products failed to expressly alienate itself from LV’s products, the use is deemed as having an intention to confuse consumers and take advantage of the LV’s reputation. The introduction of The Face Shop’s products infringed the LV’s monopoly and autonomy over LV’s brand image, harming the precious boutique image originally represented by LV’s marks by exposing them in a "banalization" manner that damaged LV’s reputation.

Conclusion

In this case, the Taiwan Intellectual Property Court adopted the standards defined by the United States District Court for the Southern District of New York in the case of LV v MOB for determining a valid parody trademark shielded from legal liability, while stressing the importance of the local social and cultural context for interpretation of a parody. Overall, parody works are but a hair’s breadth from outright infringement, and the distinction between the two is frequently border-line. Often lurking behind disguised parody resides a mala fide intention of imitating well-known trademarks to gain unlawful interests. Expressing a sense humor would certainly be an attractive strategy in terms of marketing, yet when it comes to making jokes over other undertakings in a foreign cultural context, taking a cautious step would be wise.

Reference

1. Louis Vuitton v. The Face Shop, Taiwan Intellectual Property Court Decision 2019 Min Shang Shang Zi No. 5.
2. The Taiwan Intellectual Property Court Decisions 2014 Min Shang Su Zi No. 54 and 2017 Min Zhu Su Zi No. 10.
3. The United States case of Louis Vuitton v. My Other Bag, 156 F. Supp. 3d 425, 430 (S.D.N.Y. 2016).
4. “Using a trademark which is similar to the registered trademark and used in relation to goods or services identical with or similar to those for which the registered one is designated, and hence there exists a likelihood of confusion on relevant consumers in the course of trade and without consent of the proprietor of a registered trademark, constitutes infringement of the right of such trademark.”
5. “Knowingly using a trademark which is identical with or similar to another person’s well-known registered trademark, and hence there exists a likelihood of dilution of the distinctiveness or reputation of the said well-known trademark without consent of the proprietor of a registered trademark, shall be deemed infringement of the right of such trademark.”

*Trademark Division of Tai E International Patent & Law Office