Parody defense encounters a major setback.  LV files a lawsuit overseas and is awarded $4.21 million in damages

　Since January 8, 2020, a Taiwanese company, Fan Wan Chuang Yi Co., Ltd. (author’s 　transliteration of the Chinese company name, 翻玩創意股份有限公司, official registered English company name unavailable; hereinafter referred to as “Fan Wan Company”) had, without Louis Vuitton Malletier’s authorization or prior consent, sold the products bearing the LV mark at its store, “MFLIFE MADE IN FUTURE NEW AMSTERDAM, Zhongshan Store” located in Zhongshan District, Taipei City, and also extensively used the LV mark in the store’s interior design, hanging paintings, furniture, price lists, and beverage decorations.  Fan Wan Company had also extended its use of the LV mark to its FB fan page (named “MF Life, Zhongshan”) for promotional purposes.  Louis Vuitton Malletier (hereinafter “LV company”) filed a cross-border lawsuit to seek damages and requested for Fan Wan Company’s and the store’s cease in infringement.  The Intellectual Property and Commercial Court (hereinafter the “IPC Court”) heard this case and rendered a judgment to the effect that Fan Wan Company and its two former responsible persons should cease trademark infringement, destroy infringing products, and pay TWD4.21 million and more in damages.  This judgment is appealable.  

　LV company maintained that its well-known Louis Vuitton mark (LV mark) has been recognized as one of the world’s top 20 well-known trademarks since 2008 and involves the estimated brand value of USD47 billion.  As an internationally renowned trademark possessing high degree of distinctiveness, the LV mark has been well-known to consumers in Taiwan.  However, Fan Wan Company deliberately imitated the LV mark with its infringing mark, which features a distorted human figure with a handbag marked with the famous Speedy brand name of LV company.  Moreover, both the LV mark and the infringing mark include an overlapping structure of the two letters “L” and “V”, along with repeated diamond, four-leaf, and floral motifs.  The infringing mark’s overall structure, style, color scheme, design, and appearance are highly similar to those of the LV mark.  Furthermore, the infringing mark was extensively used in the said store, and more than half of Fan Wan Company’s products per se or the products’ prominent position at the center bear the infringing mark, which manifests that Fan Wan Company took the infringing mark as the main selling point to attract consumers, and hence, such an act constituted trademark use and thereby caused the likelihood of consumers’ confusion.  

　According to Fan Wan Company, the products sold in the said store are the parodistic products under the “MF BY GCDC” brand, created by MF Production Co., which has its own trademark.  The brand, “MF BY GCDC” features what is commonly known as “bootleg” creation and reappropriates well-known brand names in humorous and parodistic manners without following mainstream trends and rejecting luxury branding, conveying a spirit of rebellion, uniqueness, and self-fulfillment.  “Bootleg”, which embraces playfulness and parody, has emerged as a major trend in street fashion.  Consumers shopping at the store are fully aware that they are buying “MF BY G.C.D.C” branded products, instead of LV products.  

　The IPC Court ruled against the defendant by the following holding:  The LV mark and the infringing mark are highly similar.  LV company is the worldwide renowned luxury brand specializing in leather goods and luggage, and its products have been widely covered by the media in Taiwan and well received by celebrities.  As such, the LV mark is well-known to consumers in Taiwan and possesses strong distinctiveness.  However, Fan Wan Company extensively used the infringing mark, which is highly similar to the LV mark, on its products and for store decoration and on various articles.  Additionally, on online marketing web pages, Fan Wan Company used the words, “Monogram” and “LV” as product names, along with some items directly named “LV bag”, “LV Tee T-shirt”.  By using the LV mark as part of product names, Fan Wan Company created an association between its products and the luxury image represented by the LV mark.  In view of the foregoing, the court determined that Fan Wan Company holds the intent to mislead consumers and take a free ride on other persons’ business reputation, and therefore, it is difficult to consider the defendant’s actions as being in good faith.  (Released 2024.07.18)  
/CCS