Parody defence unsuccessful in Louis Vuitton infringement case

Trendy Taiwan fashion brand, MF BY G.C.D.C, has been sued for infringement by Louis Vuitton after releasing a clothing line with a similar design to the Louis Vuitton LV logo. After the prosecutor’s investigation, the designer and the legal representative of MF BY G.C.D.C were both indicted for violation of Taiwan’s Trademark Act.

During the investigation stage, the designer and the legal representative both denied that they had infringed the LV trademark or that they had intended to copy the iconic brand. They asserted instead that their products were a parody, and that their own ideas and designs were used; thus, these products were their own creations rather than counterfeits. However, the prosecutor did not accept this and pointed out that the MF BY G.C.D.C products will cause confusion among consumers, and thus alleged that the designer and the legal representative had indeed violated the Taiwan Trademark Act.

MF BY G.C.D.C introduced itself as being “from the street since 2015” and explained that its designs are bootleg art, using parody to create their own brand spirit. This case is now awaiting trial at the criminal court.

In Taiwan, the Trademark Act stipulates criminal liability per the following:

• Any person who uses a mark that is similar to a registered trademark, and is used on or with goods or services identical or similar to those identified with the registered mark (and hence creates a likelihood of confusion among the relevant consumers) shall be subject to imprisonment for a period not exceeding three years and/or a fine not exceeding NT$ 200,000.
• Any person who knowingly sells or, due to an intent to sell, possesses, displays, exports or imports another person’s goods referred to in the preceding item one shall be subject to imprisonment for a period not exceeding one year and/or a fine of an amount not exceeding NT$ 50,000.

In cases brought several years ago by the owner of well-known luxury fashion brand CHANEL, the defendant had been selling a bag with a crying double C logo, which was similar to CHANEL’s mark. The court stated in the first instance that if no confusion is caused among consumers, then criminal penalties will not apply. The court further stated that after examining the bags (including the outside and inside designs, and the packaging for the bags used by the store), the court could not firmly determine that the relevant consumers would be led to believe that the bag was from or related to CHANEL. Accordingly, the defendant was acquitted at the first instance.

The defendant, however, was found guilty on appeal at the second instance. The judge stated that parody must be humorous, ironic or critical, and must entertain and contain the contradictory characteristics of the original and the unoriginal. The court also needed to balance the public interest in “not causing confusion” against “freedom of expression”. The court stated that the bag sold by the defendant had no aforesaid value, and thus there was no protection afforded to it.

In another case brought by Hermès, the defendant sold a bag on which was affixed a picture of Birkin bags. It also changed the Hermès logo to a banana and replaced the Hermès mark with the word banane. It asserted that this design was humorous, but was nonetheless indicted by the prosecutor for violating Taiwan’s Trademark Act. During the criminal trial, the defendant admitted guilt and reached a settlement with Hermès. As a result, it was sentenced to three months in prison, a penalty which could have been commuted to fines.

In Taiwan, there have been very few parody cases, therefore developments in the dispute between MF BY G.C.D.C and Louis Vuitton warrant close attention.