According to the current practice, with respect to the intellectual property system to protect the appearance of products, besides the design patent application or trademark registration, Article 22 of the Fair Trade Law ( “Act”) also expressly provides that “No business shall do any of the following in respect of the goods or services it provides: i. use a personal name, trade name or well-known business name , a trademark, container, packaging, appearanceOr other trade dress which shows the goods of another, in the same way or in a similar way or class of goods, which is confusing with the goods of another person; sell, transport, export or import goods bearing this trade presentation (omitted below).” Article 29 of the law further provides that “if a company violates the provisions of this law and thereby infringes the rights and interests of others, the injured party may request the deletion of this infringement; if there is a risk of counterfeiting, prevention can also be claimed. However, what type of appearance of the product can be considered as a “well-known commercial presentation” prescribed in the aforementioned law? Also, how does the court determine whether “confusion with the property of others” is caused? The Intellectual Property and Commercial Court (IPCC) expressed its opinions in the civil judgment Min Gong Shang Geng (1) Zi No. 2 of 2021 issued on December 23, 2021, and the facts of the case and the grounds of the judgment are summarized as follows.
The plaintiff in this case alleged that the company was a world-renowned suitcase manufacturer, whose eponymous brand had suitcases with a “groove design” as its trade dress for a number of years, widely known to businesses and consumers alike. concerned as an indication of the origin of the goods; however, a variety of defendants’ suitcases used designs that were identical or very similar to plaintiff’s “groove pattern”, which misled consumers with respect to the products in issue manufactured or sold by plaintiff, which constitutes a violation of the Fair Trade Act. In response to the above allegation, the defendants argued that the “groove pattern” was not trade dress as prescribed in the Fair Trade Act; moreover, the defendant’s suitcases differed from the “groove design” in appearance and were sold at very different prices through remarkably distinct sales channels; therefore, there was clearly no fear of confusing consumers in general. The IPCC adopted plaintiff’s claims and ruled that defendants had infringed plaintiff’s well-known trade dress, the “groove design”. The rationale is summarized as follows.
1.The system of intellectual property laws is not just limited to technical protection, but extends to innovation and fairness in market competition. The system of “notorious trade dress of goods” provided for in Article 22 of the law aims to maintain a fair market and to prevent traders from disrupting the order of transactions by clinging to the reputations of other traders. or by means of a high degree of plagiarism. The texts and drawings of the “grooved design” provided by the plaintiff can be considered as constituting the extent of the “notorious commercial presentation” if these texts and drawings are sufficient to show the innovative character of the products or to serve as a basis for the identifying the source of the goods. As for the specific technical properties such as dimensions, ratios or textures, these were not the elements making it possible to determine the “notorious commercial dress”.
The IPCC has pointed out that a trade dress is deemed notorious where the distinctive character and commercial reputation so represented are widely known to the businesses and consumers concerned, and therefore sufficient to indicate the source of the goods or services. Affected businesses and consumers include actual and potential consumers who will purchase the goods or services with the trade dress, distributors using the goods or services with the trade dress, and affected businesses supplying the goods with the trade dress. commercial, etc. Moreover, after thoroughly examining the conceptual strength of the “groove design” and the situation in which such a design has been advertised and marketed for a long time; the “groove design” suitcases sold well and enjoyed excellent brand reputation with wide media coverage; the “groove design” has obtained trademarks in other countries (indicating that such an aspect of the design is certainly distinctive), the IPCC has determined that the “groove design” is trade dress.
3. Whether or not the defendants’ products in issue “caused confusion with the products of others”:
The IPCC pointed out that, in terms of the “average attention paid by consumers in general” and the “degree of notoriety or distinctiveness of the trade dress or the degree of similarity between the trade dress and the goods”, whereas the defendant’s goods printed the defendant’s marks or logos thereon, when consumers purchased the suitcases, the impression as a whole is overwhelmed by the visual impact of the “groove design”, so it is very likely that these consumers will be confused by the impression that some type of franchise, association or sponsorship between the goods of the defendant and those of the plaintiff trade dress exists. Furthermore, the IPCC stated that, from the point of view of marketing channels, overlapping customers, competitive relationship and price difference, it was difficult to exclude the competitive relationship between the Plaintiff and Defendants, since Plaintiff’s wares and Defendants’ goods were aimed at the travel-loving middle class, for whom the aforementioned price difference was also not obvious, resulting in an overlap of clients. Additionally, the IPCC has stated that the term “confusion” provided for in subparagraph 1, paragraph 1, article 22 of the law referred to the situation in which consumers mistakenly believed that there was some type of franchise, association or sponsorship between the counterfeits and the trade dress of the genuine products, which was very likely to mislead consumers into believing that the defendant’s products belonged to the second mark of the plaintiff’s original mark, which constituted a concrete risk of confusion.
4. In view of the foregoing, the IPCC found that defendants’ products may cause confusion among consumers in general, and thus infringe plaintiff’s “groove design”, which is a well-known trade dress.
In view of the above, a variety of evidence provided by the plaintiff, which can prove the fact that the specific design has a function of indicating the source of the goods, will help convince the court to determine that this design is a design. notorious business attire. Furthermore, the IPCC indicated in the judgment above that the term “confusion” covers the situation where customers mistakenly believe that there is some type of franchise, association or sponsorship between counterfeits and the trade dress of genuine goods. It should be noted that the IPCC seems to adopt a lenient standard when it comes to determining the extent of “confusion”.