Generally speaking, “trademark parody fair use” is a defense where an unauthorized trademark user claims that the use should be shielded from liability because of public interests such as freedom of speech. In Taiwan, while there were court judgments that recognized “trademark parody fair use”, there is no clear language for such defense in the Trademark Act and the determination of “trademark parody fair use” remains unsettled in judicial practice. In a recent trademark infringement case, the Intellectual Property Court made a good demonstration of how to approach this issue.
The defendant in this case was a South Korean skincare and cosmetics business, who acquired license from an American tote bag manufacturer. The tote bag manufacturer was famous for its tote bags with drawings of various luxury brands on one side and a slogan “My other bag…” the other side. In the cooperation, the defendant released several cosmetic products, hand-held mirrors and canvas pouches with the above-mentioned drawings. The plaintiff, a French luxury retail company, brought trademark infringement proceedings against the defendant and claimed that the drawings on the products were confusingly similar to its well-known monogram and hand bag design. In defense, the defendant argued that the drawings have already been recognized as “parody” by the final judgment entered by the court in the United States.
The first instance court of this case ruled that the alleged infringing products did not violate the Trademark Act. It commented that relevant consumers of the products were fashion-conscious female buyers. According to the first instance court, these relevant consumers were able to tell the difference between the defendant and the plaintiff’s product and identify the defendant’s product as a “parody”.
The second instance court, however, reversed the ruling of the first instance court. With regards to “trademark parody fair use”, the court explained that there are two approaches under the current practice in Taiwan. Firstly, a defendant may claim that the “parody” is not an “actionable use” since it only uses the original mark for the purpose of humor rather than indicating the source of goods or services. Secondly, a defendant may also claim that the “parody” will not cause likelihood of confusion.
The second instance court further pointed out that, the alleged infringing products in this case were cosmetic products, hand-held mirrors and canvas pouches, which were not in the context of the “My other bag…” joke. In addition, the joke “My other bag…” came from a popular form of car bumper sticker “My other car…” in the United States, and consumers in Taiwan might not be able to understand the reference based on their life experience. Given the above, the second instance court concluded that there was a likelihood of confusion and the alleged infringing products were in violation of the Trademark Act.