published on 28 Apr 2016

The Taiwan IP Court rendered an interlocutory judgement in December of 2015 confirming that the signature groove design applied on RIMOWA’s suitcases is a well-known representation of goods (commonly known as “trade dress”) protectable under the Fair Trade Act (“FTC”).

This is the first time the outer appearance of a suitcase has been recognized as being well-known, and is also one of the few claimed trade dress cases being protected by the Fair Trade Act, along with two other cases for “SUBWAY” and “PRIME BLUE” whisky bottle. Pursuant to the Fair Trade Act, no entity shall, with respect to the goods or services it supplies, “[use] in the same or similar manner the […]symbol that represents [another’s] goods commonly known to relevant industry or the consumers so as to cause confusion with another’s goods; or selling […]goods bearing such representation.” Defendant Asia Pacific Automotive Inc., changed its company name to Deseno, and  online marketed its “DESENO Occa Time Traveler” line of products which are deemed strikingly similar to the design of RIMOWA products by brand consumers and fans. RIMOWA company sued Deseno for use of a similar groove design on travel accessories, especially those in the same product line as RIMOWA’s business. The court firstly analyzed the degree of fame of RIMOWA’s signature groove design and found it to be serving as an indication of the origin of products and being widely known among the relevant consumers. Although the distinctiveness of such a groove design per se in Taiwan is not high as there exists other products sharing similar features, RIMOWA had been insisting on putting grooves on all its luggage products to faithfully communicate to the public the design concept for a long period of time, as campaigned in the advertisements and the press coverages. Besides, in light of the fact that RIMOWA’s sales has risen sharply with its accumulated reputation in commerce, the groove design has a preponderant intensity in the market that the relevant enterprises and consumers have commonly recognized and have associated the same specifically to RIMOWA’s products. RIMOWA’s groove design has therefore been established as a well-known trade dress under the Fair Trade Act.

The defendant’s counter arguments were found to be groundless. For the defendant’s alleged “commonly used shape” pointed to a lack of distinctiveness, no evidence was sufficiently presented to demonstrate earlier use of the groove design by others before RIMOWA entered the Taiwanese market. Given that many other luggage products bear some longitudinal creases of the like, they were not consistent with the visual esthetic features of RIMOWA’s groove design. 

By observing as a whole and comparing the main portions, the Court found the design which was made on the defendant’s luggage products enabled, among the consumers, an overall visual impression of similarity to the main components of RIMOWA’s trade dress. Since the consumers would pay attention to the groove design when shopping for RIMOWA’s luggage, they may likely choose instead the defendant’s product erroneously because the two competing products are in same category of goods and are similar to each other with respect to main components, features, and prices. The court concluded that there is likelihood of confusion between RIMOWA and Deseno products where the consumers may be unable to identify the correct source of goods.

The parties settled the case after the release of the interlocutory judgement.

for any questions relating to this topic, please contact us at  cjchen@tsailee.com.tw