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The Status Quo of Intellectual Property Rights Protection in Taiwan's Fashion Industry

31

OCT

2019

It has long been a topic of concern amongst relevant industries to protect the related designs of such articles as leather bags, shoes, hats and accessories by intellectual property rights. Developing a product design consumes time and costs a great amount of money; however, consumers' interests in trendy products do not last for long. In recent years, brands such as Zara and Uniqlo have developed the so-called "Fast Fashion" business model. Under this trend, how to protect design outcomes quickly, instantly, and for a long period of time becomes an issue of great importance.

As far as Taiwan is concerned, design products are most often protected by trademarks. In addition, appearance designs are also likely to obtain design patents, and the appearances of products that are well known to the public may also be protected by the Fair Trade Act. However, in recent years, the Intellectual Property Court tends to broaden the definition of artistic works stipulated in the Copyright Act, making it possible to protect appearance designs of leather bags by copyrights. Such a change is quite worthy of attention. This article lists two judgments indicative of the change for reference.

Protecting appearance design by trademark (Judgment of Civil Commercial Appeal No. 16 (Second Trial) by the Intellectual Property Court, August 30, 2016):

The trademark owner in this case is Louis Vuitton Malletier, which has a registered water ripple trademark as shown below. The trademark owner claimed that the trademark of the defendant's bag also had the same pattern of water ripples and thus infringed upon the trademark owner’s trademark. The defendant argued that the trademark of the trademark owner was water ripples composed of wavy lines, which lacked distinctiveness; the water ripples on the surface of its own bag were commonly seen on general leather bags; and the bag sold thereby had other trademarks. Moreover, the defendant further argued that it did not use the water ripple pattern as a trademark. Therefore, the defendant asserted that it did not infringe upon the trademark of the trademark owner.

Registration No.:1074587

However, the Intellectual Property Court ruled in favor of Louis Vuitton for the reasons as follows: the trademark owner's water ripple pattern trademark had been familiar to relevant businesses or consumers through the long-term widespread use of the plaintiff, and the texture and thickness of the water ripple pattern on the bag which the defendant sold were similar to the trademark of the trademark owner. In addition, the Court pointed out that there were other different patterns available for use, and yet the defendant who could have chosen other kinds of "decorative patterns" used the pattern of the trademark owner’s registered trademark on an entirety of its bag, and even the style of the bag was the same as the trademark owner’s design. As a result, the Court concluded that the defendant used the water ripples as a trademark rather than a decorative pattern, and such use of the water ripple pattern on its products was likely to confuse and mislead consumers with regard to the source of the products. Therefore, the Court ruled that the defendant infringed upon the trademark of the trademark owner, and should be liable for damages.

Protecting appearance design by copyright (2018 Civil Judgment of Civil Affairs, Civil Copyright Appeal No. 15 (Second Trial) by the Intellectual Property Court, October 17, 2019)

The trademark owners in this case are Celine Societe Anonyme (hereinafter referred to as Celine) and Givenchy Societe Anonyme (hereinafter referred to as Givenchy). Celine claimed that the “design of C'eline Luggage” was an artistic work originally created by the appellant Celine, and Givenchy claimed that the "design of Givenchy Pandora " and the "design of Givenchy Antigona" were artistic works originally created by the appellant Givenchy. (The designs are shown below. These photos are take from the annex of the judgment of the Judicial Yuan’s Law and Regulations Retrieving System database)

(Artistic work of Celine Societe Anonyme) (Artistic work of Givenchy Societe Anonyme)

The Court decided that the "appearance design" of Celine’s handbag was an original "applied artistic work" and should be protected by the Copyright Act. The main reason was that the artistic work was designed to highlight the smiley face formed due to the shape of the handles and the position of the zipper. The work was applied to smiley face bags, making these bags stand out in the boutique fashion industry with their unique simplicity, retro and other personality. Consequently, the Court agreed that the work had originality. In addition, the smiley face was deemed as an embodiment of the author’s personality and uniqueness as it highlighted the artistic skills of combining lines, shapes and colors, and expressed the thoughts and feelings of the author. Thus, it fell within the category of artistic works and should be protected by the Copyright Act. Whether it was handmade or mechanically mass produced did not hinder its status as an artistic work. Therefore, the Court rules that Celine’s handbag design should be protected by the Copyright Act.

The designs of Givenchy’s bags were also deemed as original "applied artistic works," and thereby should be protected by the Copyright Act. As far as the Pandora series of bags were concerned, the main reason was that the design of the bag revealed its unique simplicity and asymmetrical handle shape and other personalities. Therefore, the design of Pandora bags was a work having originality and should be protected by the Copyright Act. As for the Antigona series, the handbags were made of large metal zippers and straps, and a triangular leather patch at the joint of the body. With geometric bag shapes coupled with angular details, Antigona bags incorporated a large number of military elements, and perfectly interpreted the contrast between “fashion” and “military uniforms”. The design work showed its unique simplicity, geometry and other contrasting personalities. Therefore, the Court ruled that the design of Givenchy Antigona was an original work and should be protected by the Copyright Act.

Under the "Fast Fashion" trend, it is important to quickly and immediately protect the product designs of the fashion industry, and copyrights that do not require registration may be one of the best solutions. The above-identified cases provide a broader definition of artistic works than before, and show a correct direction to protect the product designs of the fashion industry products under the current intellectual property rights system.

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