Unsuccessful parody defense in Louis Vuitton counterfeiting case
Trendy Taiwanese fashion brand MF BY GCDC has been sued for infringement by Louis Vuitton after launching a clothing line with a design similar to the Louis Vuitton LV logo. After the prosecutor’s investigation, the designer and the legal representative of MF BY GCDC were both charged with violating Taiwan’s trademark law.
During the investigation phase, both the designer and the legal representative denied having infringed on the LV brand or intended to copy the iconic brand. They instead claimed that their products were a parody and that their own ideas and designs were used; thus, these products were their own creations rather than counterfeits. However, the prosecutor did not accept this and pointed out that MF BY GCDC products would cause consumer confusion, and therefore alleged that the designer and the legal representative had indeed violated Taiwan’s trademark law.
MF BY GCDC introduced themselves as being “on the streets since 2015” and explained that their designs are pirate art, using parody to create their own brand spirit. This case is now awaiting trial in the criminal court.
In Taiwan, the trademark law stipulates criminal liability as follows:
- Any person who uses a mark similar to a registered mark and which is used on or with goods or services identical or similar to those identified by the registered mark (and therefore creates a risk of confusion among the consumers concerned) is subject to a penalty. imprisonment not exceeding three years and/or a fine not exceeding NT$200,000.
- Is liable to imprisonment for up to one year and/or a fine not exceeding NT$50,000.
In cases brought several years ago by the owner of the famous luxury fashion brand CHANEL, the defendant was selling a bag with a weeping double C logo, which was similar to CHANEL’s mark. The court said in the first instance that if no confusion is caused among consumers, the criminal penalties will not apply. The court further stated that after examining the bags (including the exterior and interior designs and the packaging of the bags used by the store), the court could not determine with certainty that the affected consumers would be led to believe that the bag was from or related to CHANEL. Accordingly, the defendant was acquitted at first instance.
The defendant was however convicted on appeal at second instance. The judge said the parody must be humorous, ironic or critical, and must maintain and contain the contradictory characteristics of the original and the non-original. The court also had to balance the public interest in “not causing confusion” against “freedom of expression”. The court declared that the bag sold by the defendant had no aforementioned value and therefore no protection was afforded to it.
In another case brought by Hermès, the defendant sold a bag on which was affixed a photo of Birkin bags. He also changed the Hermès logo to a banana and replaced the Hermès brand with the word banana. He claimed that the drawing was humorous, but was nonetheless charged by the prosecutor for violating Taiwan’s trademark law. During the criminal trial, the accused admitted his guilt and reached an agreement with Hermès. As a result, he was sentenced to three months in prison, which could have been commuted to a fine.
In Taiwan, there have been very few cases of parody, so the evolution of the dispute between MF BY GCDC and Louis Vuitton deserves special attention.
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