Jih Ch'ang Leather Goods Development Co., Ltd. filed a complaint against Chia Ssu K'e Industrial Co., Ltd. for the latter's alleged violation of the Fair Trade Law
Chinese Taipei
Case:
Jih Ch'ang Leather Goods Development Co., Ltd. filed a complaint against Chia Ssu K'e Industrial Co., Ltd. for the latter's alleged violation of the Fair Trade Law
Key words:
counterfeiting, misuse of another's commercial reputation
Reference:
Fair Trade Commission Decision of 26 January 1998 (the 326th Commission Meeting); Letter (87) Kung Ts'an Tzu No. 8504962-009
Industry:
Leather/Fur Goods Production Industry (2050)
Relevant Laws:
Summary:
With respect to Article 20(1) of the Fair Trade Law:
(1) In accordance with Article 20(1) of the Fair Trade Law, an enterprise, in supplying goods or services in its business operation, shall not "use another person's name, firm or corporate name, trademark, merchandise container, packaging, exterior appearance, or any other expression employed by the said person to distinguish its products, which are well-known to the relevant public, for an identical or similar purpose, thus creating and causing confusion with products of the said person; or selling, transporting, exporting or importing products employing such an expression." The symbol protected by the said article refers to a designation that serves as identification or carries secondary meaning as to represent the source of the product/service. The shape, packaging, interior structure, etc. that are customarily applied for certain products does not serve to represent the source of the product/service and, therefore, do not come under the protection of the said provision of the Fair Trade Law.
(2) The complex crisscross pattern surface design of the complainant's Ta K'e Chin Tien leather goods lacks any distinctiveness to identify the source of the product. An ordinary consumer cannot identify the producer/supplier or associate the product with a certain producer/supplier by ordinary observation. Therefore, the surface design of the complainant's Ta K'e Chin Tien leather goods does not meet the requirement of an symbol protected by the Fair Trade Law. In addition, the exterior design of the complainant's and the respondent's purse products are both considered common in the market. As far as the domestic consumers are concerned, none of the design of complainant's purse products carries any particular significance.
The complainant alleged that the respondent has plagiarized the buckle design of its products. However, the buckle design is an exterior structure of the product, the purpose of which is functional and not considered having unique design to represent the product. Accordingly, none of the crisscross-ornamented surface design, buckle and appearance of the complainant's Ta K'e Chin Tien goods meets the requirement of a symbol under Article 20(1) of the Fair Trade Law.
With respect to Article 24 of the Fair Trade Law:
(1) In response to the complaint, the respondent stated the following: a friend of the respondent's introduced to it a floral design tan-colored cloth. The respondent then utilized the crisscross design usually seen on Chinese antique articles. The respondent further asked Ch'uan Sung to do the design. The design finally came into use in January 1996 after a number of modifications. The respondent then asked Ch'uan Sung to apply the design to leather material. The respondent did its own design, made samples and marketed its product. There exists no evidence to prove that the respondent has, by its use of the crisscross-ornamented design, engaged in the act of misusing another's commercial reputation or imitating another's trade dress to a high extent. Furthermore, the crisscross design has been used and seen on antiques and modern knitted/woven articles. Similar designs have been used on modern leather goods, scarves, neckties and so on. It is not a creation by either the complainant or the respondent. There is no justifiable reason to stop any other person from using similar designs. For any artistic design to become well received by the consumer and accordingly attain commercial value, it usually takes the general public's participation and therefore it should be shared by the general public.
(2) The styles of small leather goods do not vary substantially, nor do popular colors or pattern designs. Based on ordinary experience, when purchasing purse products, the consumer would take into accounts such factors as the price, style, pattern design and purpose of use. The brand name, which is usually depicted by a metal design (such as buckle, zipper head, metal label, tag) is also an important factor for consideration. The surface design of the complainant's product differs from that of the respondent's product: the complainant's product depicts a Shen Shih duck (literally meaning a "gentleman duck") design all over its surface; the respondent's has a “Q” mark all over its surface. The consumer can easily distinguish the two products. We therefore cannot hold the respondent in violation of Article 24 of the Fair Trade Law, as there is no evidence to prove that the respondent engaged in a high degree of imitation.
Summarized by Ch'en, P'in-ch'iu
Supervised by Wu, Ting-hung
Appendix:
Chia Ssu K'e Industrial Co., Ltd.'s Uniform Invoice No.: 86826656