Newsletter - November 2022

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”)

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.

(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:

(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.

(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.

Copyright

I. The Copyright Registration in Taiwan

Please be advised that the copyright registration system was abolished in a Copyright Act amendment promulgated on January 21, 1998, and the government agency in charge of copyright matters has ceased accepting copyright registrations since January 23, 1998 in Taiwan.

In principle, original works of authorship has been protected by copyrights as soon as it is completed. Because Taiwan became a member of the World Trade Organization (WTO) on January 1, 2002, under the WTO's Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs), member countries are obligated to protect the works of the nationals of other members. Therefore, the client’s new work is entitled to the protection of copyrights in Taiwan due to the reciprocal principle.

Since copyrights are private rights, copyright owners have to bear the burden of proof of the existence of their rights when a dispute or lawsuit occurs. If the clients worry that it’s difficult to prove ownership of copyrights, there are several ways for the clients to secure additional copyright protection as follows.

(1)

The clients have copyrights recorded in a private organization in Taiwan. Since our firm was registered as a copyright attorney in “Taiwan Development & Research Academia of Economic & Technology”. We will be pleased to assist the clients in the copyrights recordation in Taiwan.

(2)

The clients sign a Statutory Declaration (SD) testified by a lawyer or a Notary Public in your country. By this way, should evidence be needed in Court, the SD can be produced as prima facie evidence (evidence at first sight, until rebutted by the other party) to prove that copyright subsists with clients.

(3)

The clients have the copyrights recorded in the countries where there are official copyright registration systems.

(4)

We issue a Legal Attest Letter in the name of our firm indicating the information of the client's copyrights. The Legal Attest Letter will go through the Post Office and then come back to our firm. The Post Office will keep one copy thereof. When there are disputes on the clients’ copyrights, the Court can check the copies deposited in the Post Office.

The foregoing ways are auxiliary methods only and what they can prove are:

(1)

the date when the SD and the work are testified by a lawyer or a Notary Public;

(2)

the work has existed at the moment when any of the foregoing ways is conducted; and

(3)

The clients declare that they are the true copyright holder of the work, so they are presumed to be the true copyright holder of the work as declared.