In a trademark battle involving famous Louis Vuitton Monogram for remake use, the Japan IP High Court ruled in favor of Louis Vuitton and ordered appellant to pay 1.7 million JP-Yen for damages on October 23, 2018.
Appellant has produced shoes, caps and other fashion items by making use of material of secondhand Louis Vuitton goods (see below) and promoted the items as a custom-made remake, e.g. LOUIS VUITTON REMAKE DENIM CAP/BLUE, through internet.
Unfair Competition Prevention Act
Louis Vuitton filed a lawsuit and demanded to stop selling the items as well as payment for the damage on the grounds that appellant’s act constitutes unfair competition under Article 2(1)(ii) of the Japan Unfair Prevention Act.
Article 2(1)(ii) of the Unfair Competition Prevention Act is a provision to prohibit any person from using a famous source indicator of another person without permission.
Appellant argued they become popular among relevant consumers as a business entity to produce a custom-made remake from secondhand of genuine brand. If so, since consumers are fully aware that the items are remake, neither faked goods nor brand-new article, confusion is unlikely to happen in the mind of consumers. Besides, appellant insisted as long as the Louis Vuitton Monogram is not used as a source indicator but design, the Unfair Competition Prevention Act is not applicable to the items.
IP High Court decision
The IP High Court decisively dismissed appellant’s allegations and decided the monogram on the items still plays a role of source indicator in view of remarkable reputation of Louis Vuitton Monogram. It can be easily presumed that average consumers at sight of the items shall conceive Louis Vuitton. Even if the items are sold as a custom-made remake or with any description to appeal the items made from secondhand, such facts will not affect the decision on the merit.
[Heisei 30 (Ne)10042]
The Unfair Competition Prevention Act is essential to the case where actual confusion would not happen in fact regardless of unauthorized commercial use of famous brand.
On July 30, the Tokyo District Court delivered a ruling in the case of copycat fashion dispute pertinent to the shape of cold shoulder blouse.
[Case no. Heisei 29(Wa)30499]
Cold Shoulder Blouse
The case was brought into the court by PETTERS Co., Ltd. who complained MAXIM Co., Ltd. of unlawfully imitating a unique shape of cold shoulder blouse designed by plaintiff and damaging business interests by distribution of defendant’s “KOBE LETTUCE” cold shoulder blouses.
According to the court decision, plaintiff allegedly designed a new cold shoulder blouse featuring unique ruffle sleeve and long ribbon (see right in below) in February 2016 and began selling from August of the year. Subsequently, defendant imported similar blouses (see left in below) from Korea and promoted for sale in Japan since May 2017.
Unfair Competition Prevention Law
Plaintiff argued defendant shall be liable for his conduct because it constitutes violation of Article 2(1)(iii) of the Unfair Competition Prevention Law.
Article 2(1)(iii) of the Unfair Prevention Law prohibits unauthorized party from assignment, lease, display for assignment or lease, export or import of goods which shape results from imitation of goods belonging to other entity.
The party shall be exempted from liability if it passes three months from initial offer for sale of imitated goods at the time of his misconduct.
From the case law, it is construed that the article does not apply for imitation of a commonly used-shape in light of the purposes and objectives of the article.
The judge, however, did not clearly state if overall shape of plaintiff’s cold shoulder blouse shall be protectable under the article.
As a consequence, the court totally dismissed the case on the grounds that:
There exists difference in the shape of ruffle sleeve and ribbon between disputed goods.
The difference gives rise to distinctive impressive in the mind of consumers
If so, the shape of defendant’s goods shall neither be identical with, nor deemed imitation of plaintiff’s goods.
Masaki MIKAMI, Attorney at IP Law – Founder of MARKS IP LAW FIRM