In a decision rendered on June 27 2023, Taiwan’s Intellectual Property and Commercial Court (the IPC Court) found the product design alleged by the plaintiff cannot be eligible for copyright or trade dress protection.
The facts of the case
The case arose out of a dispute between two e-commerce vendors. The plaintiff sold its moisturiser product under the brand “Lily Rosee”, while the defendant sold a similar product under the brand name “Li Yan”. According to the plaintiff, its product (see below, on the left) is eligible for protection as an artistic work under the Copyright Act.
Additionally, since the defendant’s product (see below, on the right) demonstrates a similar bottle appearance – with a cylindrical body, a circular cap, and a pink hyaluronic acid solution inside – the plaintiff argued that the defendant’s unauthorised use of a similar product appearance not only infringes the plaintiff’s copyright over its product appearance, but also constitutes trade dress infringement or unfair competition under articles 22 and 25 of the Fair Trade Act.
Findings of the IPC Court
The IPC Court rejected all the plaintiff’s arguments, and ruled in the defendant’s favour.
On the issue of copyright, the IPC Court found the aesthetic features alleged by the plaintiff insufficiently demonstrate the required originality for copyright protection. The IPC Court posited that the plaintiff’s product appearance is quite common. Taking into consideration the aluminum cap, the glass bottle, the brand name “Lily Rosee” in white, and the pink solution contained in the bottle, the IPC Court found such elements are similar to the appearance of other commonly seen cosmetic products, and unable to demonstrate the plaintiff’s artistic skills or workmanship. Thus, the plaintiff’s product appearance is not eligible for copyright protection.
The plaintiff also argued that the defendant’s product violated Article 22 of the Fair Trade Act, which prohibits any commercial activities that may engender confusion among the public through use of a mark or symbol which is identical or similar to another’s well-known trade dress or other source identifiers. Said trade dress or other source identifiers encompass not only unregistered trademarks but also names, product packaging, product configuration, outer appearance, and any other signs identifying the source of goods or services. However, the IPC Court found that evidence submitted by the plaintiff – including bloggers’ essays, internet news, customer reviews, and consumers’ enquiries – did not show the relevant market share of the plaintiff’s product, nor the degree of its popularity among the relevant public. Hence, it is baseless for the plaintiff to allege that its product appearance is commonly known to the public.
Furthermore, while the “confusion” prescribed under Article 22 of the Fair Trade Act does not require actual confusion, the IPC Court elaborated that the plaintiff still needs to prove there is a specific risk of confusion caused by the defendant’s act, such as evidence showing:
The degree of fame of the product appearance;
Any overlapping of the target consumers;
The price gap;
The degree of similarity of the business models; and/or
The existence of a competitive relationship between the parties.
The IPC Court found that although the plaintiff’s and the defendant’s products were available through the defendant’s shop on Shopee, the e-commerce platform, there is no specific risk of confusion shown in the records.
Lastly, on the issue of Article 25 of the Fair Trade Act, which provides that “no enterprise shall otherwise have any deceptive or obviously unfair conduct that is able to affect trading order”, the IPC Court opined that there must be clear and convincing evidence showing the trading order and fair competition would be harmed by the defendant’s alleged deceptive or unfair conduct. Here, the IPC Court sided with the defendant, because none of the evidence submitted by the plaintiff showed the defendant’s intent to deceive or mislead consumers, nor did the plaintiff explain why using a bottle that is commonly seen in the cosmetic industry would affect the trading order.
Key takeaways
In view of the above, with regard to comparing a product appearance that is protected as a 3-D trademark or a design patent, a plaintiff that intends to apply the Copyright Act or the Fair Trade Act to product appearance may face an uphill battle. While originality for copyright protection only requires a minimum degree of creativity, the IPC Court seems to adopt a more stringent standard when considering utilitarian work such as an ordinary bottle for a cosmetic solution.
Since the IPC Court is known for its fast-paced schedule, it is recommended that those that wish to resort to the Copyright Act and the Fair Trade Act to protect a product appearance should conduct a thorough analysis on the copyrightability of the alleged product design before filing the lawsuit, and, if necessary, prepare a market survey report showing the strength of reputation or distinctiveness of the product.
