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Taiwan’s courts assess whether Rimowa’s groove design is protectable under the Fair Trade Act

Frank Liu of Saint Island International Patent & Law Offices considers how Rimowa have fared in their battle against alleged product piracy

Rimowa is a suitcase manufacturer and seller founded in Germany. ‘Rimowa’ suitcases are widely known for their parallel aluminium grooves which have become characteristic of the brand.

In 2016, Rimowa filed lawsuits in Taiwan against a number of suitcase traders. As the groove designs on the defendants’ suitcases appeared similar to the groove design on ‘Rimowa’ suitcases in some way, Rimowa claimed that the use of such designs by the defendants constituted a violation of the Fair Trade Act. On that basis, Rimowa requested a ban on selling, and compensation for damages.

After evaluation, the IP court ruled in favour of Rimowa in both the first and second instances. It found that the defendants’ sale of suitcases carrying groove designs was similar to the groove design on ‘Rimowa’ suitcases, a well-known symbol for product design, and that it would undoubtedly engender confusion among lay consumers or relevant businesses.

Later, the two defendants pursued appeals to the Supreme Court, and the cases of similar nature were referred to different panels. In December 2020, the panels vacated and remanded the two decisions rendered by the IP court for reconsideration. The panels held that:

1.    According to Article 22 of the Fair Trade Act, a protectable symbol must have the function of identifying the source of the applied-to goods so that consumers or related businesses are able to distinguish the applied-to goods from those of others.

From Rimowa's evidence of long-term marketing use, it is not clear whether it is Rimowa’s word mark, or the groove design that enables consumers to identify a ‘Rimowa’ suitcase. In addition, by the time Rimowa first launched its suitcases in Taiwan in 2003, existing suitcases manufacturers had been using similar designs. Even in 2017, suitcases carrying similar-looking groove designs were seen being circulated in the market, among which some had obtained design patents.

In Rimowa's brand introduction leaflets, and marketing advertisements, the pictures of ‘Rimowa’ suitcases are mostly shown alongside the ‘Rimowa’ word mark, an assurance of quality excellence.

If the other constituting elements, such as the word mark ‘Rimowa’, the aluminum-coloured, lightweight design of the suitcase in square shape, and the patented wheel kit were all ignored, it would be doubtful that the groove design alone could serve the function of identifying the source of the suitcases, and that lay consumers are able to identify the source of the suitcases by virtue of the groove design only.

2.    In a cause of action for infringement under the Fair Trade Act, the key inquiry is whether the defendant’s false or misleading representation as to the origin of goods is ‘likely’ to confuse the consuming public.

Although evidence of actual confusion is not essential, the following factors shall all receive considerable weight in the ‘likelihood-of-confusion’ test: (1) the strength of the plaintiff’s representation – whether it can conjure up the image of the plaintiff; (2) the degree of similarity or proximity between the two representations and the applied-to goods; (3) whether the two parties’ marketing channels or target consumers are overlapping; (4) price; and (5) whether the two parties are competitors.

Obviously, the IP court did not launch an in-depth comparison between the two parties’ suitcases in terms of overall appearance or the groove design. Neither did it carefully evaluate the factors in the ‘likelihood of confusion’ test. Moreover, the defendant’s following argument cannot be deemed to be entirely improper:

The price of our suitcases is only 1/10 of that of the plaintiff’s suitcases. The sales channels of the two parties’ suitcases which are dissimilar in overall outer appearance materially differ. In the exercise of ordinary care and caution, lay consumers would not assume that the defendant’s suitcases either originated from the plaintiff or had connection with the plaintiff.

As can be seen, when considering the applicability of Article 22 of the Fair Trade Act, the Supreme Court took a more stringent attitude in regard to the interpretation of ‘likelihood of confusion’. It is worth observing whether the IP court will accept the Supreme Court’s point of view and render new judgments in favour of the defendants.

One other matter which merits attention is that, if the cases are remanded to the IP court for re-consideration based on the reason that the defendants’ use of the groove design on their suitcases did not run afoul of Article 22 of the Fair Trade Act, Rimowa may additionally claim that the defendants’ conducts also run afoul of Article 25 of the Fair Trade Act.

In view of the silence of the IP court and the Supreme Court in regard to this issue, Rimowa can emphasise that Article 25 of the Fair Trade Act which stipulates that no enterprise shall be allowed to do anything that would affect transaction order in the market or obviously be against fair trade does not insulate the defendants from liability for infringement. Once such a claim is recognised, the purpose of the plaintiff stopping the defendants from using the groove design on suitcases may be equally achieved.

Note: One of the defendants’ suitcases (copied from a decision rendered by the IP court)

Frank LiuManaging partner, Saint Island International Patent & LawE: siiplo@mail.saint-island.com.tw

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