Idee Department Store of China Rebar Co., Ltd., Taipei and Taoyuan branches are complained of plagiarizing the appearance of other’s products and giving these products as giveaways in the promotional activities of the aforementioned branches, a suspected violation of the Article 20 and Article 24 of Fair Trade Law

Chinese Taipei

Case:

Idee Department Store of China Rebar Co., Ltd., Taipei and Taoyuan branches are complained of plagiarizing the appearance of other’s products and giving these products as giveaways in the promotional activities of the aforementioned branches, a suspected violation of the Article 20 and Article 24 of Fair Trade Law

Key Words:

counterfeit and plagiarize, confusion and misidentification, giveaways

Reference:

Fair Trade Commission Decision of February 3, 2005 (the 691st Commissioners' Meeting)

Industry:

Department Stores (4751)

Relevant Laws:

Article 20 and Article 24 of the Fair Trade Law

Summary:

1. The One Images (hereinafter referred to as “the complainant”) has filed a complaint against China Rebar Co., Ltd. (hereinafter referred to as “the respondent”) that is summarized as follows: Upon the approval of its establishment on February 14, 2003, the complainant has been selling self-designed living articles with the Company’s own brand “The One”. The complainant has once set up sales counters at the Idee Department Stores, Taipei and Taichung branches of the respondent. Presently, the complainant has sales counters at Tienmu Takashimaya Department Stores and Tunnan Eslite Department Store. The consumers have given acclaims to and are fond of products designed by the complainant. Also, there are coverage of the aforementioned products in newspapers and weeklies. Thus, the relevant consumers are considerably familiar with the aforementioned products. The “teapoy pillow” as produced and sold by the complainant is an innovative product that combines household pillow together with the flat of tea table. The flat of tea table is a photo frame of which picture inside the frame is replaceable. The pillow and surface of the frame are bound with super fastener so that the pillow can be taken apart for the convenience of washing. However, in the beginning of June 2004, the respondent, the Taipei and Taoyuan branches of Idee Department Stores have copied the appearance of the complainant’s “teapoy pillow” for the giveaways of the sales promotion “intimate pillow”. In addition to this, the “six-piece coaster set” produced and sold by the complainant is a jigsaw puzzle coaster arranged by six different patterns of ceramic tiles in a wooden frame. The ceramic tile coaster possesses both functions of coaster and tablemat; the wooden frame can be used as tray. The coasters become a piece of creative decoration after being stored together. But, the respondent has copied the appearance of “six-piece coaster set” as designed by the complainant to produce sales promotion giveaways “superbly impressive coaster set” for the aforesaid mid-year sales promotion. Such acts have led to consumers misidentifying that the complainant has provided the respondent with the aforementioned products as giveaways, sufficient to cause consumers confuse about the source of goods. Furthermore, the sales of the complainant were affected. The acts of the respondent were contrary to business ethics and constituted an act of unfair competition, which is suspected of violating Article 20 and Article 24 of the Fair Trade Law.
   
2. With regard to the violation of Article 20 of the Fair Trade Law, findings of this Commission’s investigation show: the square appearance of “teapoy pillow” produced and sold by the complainant is the common shape for ordinary pillow and the collocated square photo frame top is a practical and beautiful functionality design. It is still difficult to believe such function can serve to indicate the source of goods and hence does not have any identifiability. Whereas, the “six-piece coaster set” as produced and sold by the complainant is a design work of household decoration, a jigsaw puzzle coaster arranged by six different patterns of ceramic tiles in a wooden frame. The findings of the investigation show that either square coaster or wooden frame and tray are the regular shapes for goods of the same category. At domestic and overseas markets, various sources of goods have adopted the similar designing concept of combining square ceramic tile coaster and wooden frame tray into a multipurpose product of convenient storage. Therefore, it cannot be concluded that the aforementioned products possess any functions that can serve to indicate the source of goods. Next, the investigation shows that the complainant has marketed the aforementioned goods since May 2003, the duration of marketing prior to the accusation is only about one year; hence, it is really not easy to believe that the appearances of the aforementioned goods have acquired the features of secondary meaning due to long and continuous use by the complainant. For this reason, it is difficult to say that the appearances of “teapoy pillow” and “six-piece coaster set” produced and sold by the complainant constitute the features as stipulated in the Article 20 of the Fair Trade Law. Therefore, the aforementioned Article is not applicable in this case.
   
3. With regard to the violation of Article 24 of the Fair Trade Law, this Commission has reviewed the information of volume of advertisement, marketing channels, sales period and sales volume related to the goods at issue presented by the complainant, there is no concrete evidence that the complainant have invested substantial effort in the promotion and marketing of goods at issue. Again, it is found that the square appearance of “teapoy pillow” produced and sold by the complainant is the shape commonly used in the regular marketed pillow or teapoy, should be considered as a technique readily accessible to the public. Although both the complainant and the respondent have combined pillows together with teapoy frames in their designs of the goods at issue, however, in addition to the obvious difference between pictures inside both frames, there is a hook at the back of the teapoy frame of the respondent and the product can be hanged to the wall directly whereas the back of the teapoy frame of the complainant does not have any hook. Although the colors of pillowcases for the complainant and the respondent are both black, however, the pillowcase of the respondent is designed as full-wrapped and thus it can be separated from the teapoy frame and used alone as a pillow or cushion whereas the pillowcase of the complainant is designed as half-wrapped and if it is separated from the teapoy frame, the white pillow is directly visible. It is obvious that both goods at issue still have considerable differences in the overall appearances and compositions. Additionally, the colors and words marked on teapoy frames for the complainant and the respondent are also different. The outer frame color of the complainant’s teapoy frame is black and “The One” is marked on it whereas the outer frame color of teapoy frame for the respondent is gray – the major logo color of Idee Department Stores and the mark on it is “IDEE”. It can be concluded that the respondent has done the utmost to make distinctions and there is no likelihood that the consumers will get confused about the sources of the goods. With regard to “six-piece coaster set” produced and sold by the complainant, the square appearance is the common design for the regular marketed coasters or trays and should be considered as a technique readily accessible to the public. Also, for the goods at issue of both the complainant and the respondent, in addition to the difference between the patterns of coasters, the words marked on the frame of trays are also different. The word for the complainant is “The One” whereas that for the respondent is the trademark of the respective Idee Department Stores “IDEE”. As long as the consumers pay an ordinary degree of attention, there is no likelihood that the consumers will get confused about the sources of the goods. Furthermore, the investigation of domestic and overseas online purchase catalogues shows that goods of similar design from various sources have already existed in the market. In accordance with the present facts and evidences, it is still not sustainable to conclude that the respondent has plagiarized the appearances of goods of the complainant and exploited the efforts of the complainant through the act of unfair competition.

Summarized by Ho, Yi-Hsuan
Supervised by Wu, Lieh-Ling

Appendix:

China Rebar Co., Ltd.’s Uniform Invoice Number: 03090407