The determination of the “Parody Defense” related to the Trademark Infringement for “LV” in Taiwan
[ November 2022 ] >Back| Trademark | |||
| I. The determination of the “Parody Defense” related to the Trademark Infringement for “LV” in Taiwan | |||
| 1. | Abstract: | ||
| Decision No.: Civil Judgment of the Intellectual Property Court, 2019 Min Shang Shang Zi No. 5. Relevant statutes: Articles 5, 36(1)1, and 68 of the Trademark Act Date of Judgment: January 16, 2020 Plaintiff: Louis Vuitton Malletier ((hereafter “LV”) Defendant: LG H&H TAIWAN Co., Ltd. (hereafter “LG”) |
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| 2. | Decision Highlight | ||
(1) |
LG is not allowed to use the mark  and other marks similar to LV’s mark  and Monogram Multicolor designs on the manufactures, imports, and sells of the goods or any mediums and shall not hold, display, sell, export or import the goods using the same or similar trademarks and designs of Monogram Multicolor. |
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| (2) | The goods should be recalled or destroyed. | ||
| (3) | The parties, summary and main content of the Judgment should be published in the newspaper for one day. | ||
| (4) | LG and its representative should compensate LV in the amount of NTD2,835,000 (about USD94,500). | ||
| 3. | The goods at issue: | ||
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| (Source: https://law.judicial.gov.tw/FJUD/Default_AD.aspx) | |||
| 4. | LG’s main arguments: | ||
| The US Federal Court has determined that the MOB canvas bag constitutes a fair use of trademark parody (hereinafter referred to as the US MOB case). The same flipping style and joking connotation can be extended to other products other than canvas bags, such as powder cakes, cosmetics, etc. | |||
| 5. | The Court did not accept LG’s arguments forthe following reasons: | ||
| (1) | Although US MOB case was successful and its parody use of the trademark was acceptable in the USA, it does not mean that MOB’s goods bearing the said mark are allowed to be used in Taiwan. | ||
| (2) | The marks used on MOB’s products (as shown below) are different from those of LG’s products at issue. | ||
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| (Source: https://law.judicial.gov.tw/FJUD/Default_AD.aspx) | |||
| (3) | There are different judgments and standards in different countries. Although we may take foreign cases as a reference, we still should judge according to the regulations in Taiwan. | ||
| 6. | The Court further explained the requirements for fair use of trademark parody in the US MOB case, and the way of identifying trademarks in Taiwan: | ||
| (1) | As to the question of whether a trademark is going to cause the likelihood of confusion among relevant consumers, the result often depends on whether relevant consumers are going to have the impression that the trademark is identical with or related to other sources of goods or services according to their immediate reaction at the moment they see the trademark (without much reasoning and thinking). In the US MOB case, the court pointed out the criteria for a parody defense to be sustainable which included the alleged parody must be able to “clearly indicate that it is not connected in any way with the original” and “allow the consumers to immediately perceive that it is a parody”. | ||
| (2) | Under the realm of our Trademark Act, the one who raises the fair use defense based on parody may depend on two kinds of argument: | ||
| (A) | The trademark is only used to express a parodic speech rather than indicate the source of the goods or services. Accordingly, it does not constitute the “use of a trademark”, not to mention trademark infringement. | ||
| (B) | If the first argument is not sustained by the court, the user can still argue that there is no infringement of the trademark rights because the use of the trademark is not going to cause any likelihood of confusion among relevant consumers. However, if the use of another person’s trademark is detrimental to the most important function of the trademark which is to identify the source of the goods or services, such use cannot be immune from trademark infringement on the excuse of the parody. | ||
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