Often, copycats who use someone else’s trademarks try to worm their way out of litigation with one “simple trick”: trademark parody. However, as “My Other Bag” had to learn due to a recent judgement by the Taiwan Intellectual Property Court (IPC), it is not that easy to prove. Moreover, if your enemy is Louis Vuitton Malletier (LV), well … you had better have your affairs in order. This case is just the newest of a long ongoing struggle between both brands, which (so far) has been mostly carried out in the United States but has in the last few years branched out into Asia as well.

What happened?

LV (the plaintiff) has obtained several registered trademarks and published a colorful take on the Louis Vuitton pattern. The Monogram Multicolor had been designed by renowned Japanese artist Takashi Murakami in 2003 and debuted in that years Spring/Summer show and became an instant hit. The multicolor version is also not the only work Murakami did for the French maison, as he is also behind the Cherry Blossom and Monogramouflage lines. The defendant, LG HOUSEHOLD & HEALTH CARE (TAIWAN), LTD (LG), sold compact foundations, canvas bags and handheld mirrors, which are similarly patterned. LV thus filed an infringement complaint against LG.

MOB’s and Louis Vuitton’s versions

What even IS a trademark parody?

Similar to the concept of parody in copyright law, a trademark parody is a simple form of entertainment conveyed by adapting a well-known trademark in a way of satire, ridicule, teasing or criticism. The theory behind it is that there is no likelihood of confusion between the original trademark and the adapted sign, because a parody will not be taken seriously. In the past, European courts deemed such a use not be a “use as a trademark”. This changed after the decision “Adidas/Fitnessworld” of the European Court of Justice (ECJ). Now a decision on the level of impairment to the original trademark is necessary.

Accordingly, a successful parody neither leeches on the original’s goodwill or harms it, nor does it dilute its distinctive character. Marks with both are the best objects for parody because of their popularity. A trademark parody must initially bring to mind the original, but it must also be clever enough to make it clear, that it is not the original nor connected to it, but is a parody, a humorous take. Added caution has to be taken, as courts have in the past even deemed technically “succesful” parodies as infringements, if they take advantage of the original’s reputation.

So a successful trademark parody must convey two contradicting messages: that it is the original, and that it is not, because it is a witty joke. In this context, free speech of the parodist and the intellectual property rights of the owner clash and must be balanced by the courts.

What did the court say?

The IPC clearly did not think that LG satisfied any of the criteria that constitute a trademark parody. The court analyzed that the term “My Other Bag” originates from the US-American joke “My Other Car”. However, the products at issue have no similarities to neither cars nor bags. In addition, Taiwanese customers wouldn’t know about the American joke due to differing cultural backgrounds. Furthermore, the “parody” was extremely similar to the trademarks used by LV and the Monogram Multicolor. LG used both in a manner covering over two-thirds of the products. In addition, though the text “My Other Bag x THE FACE SHOP” was displayed on the products themselves, it was only in small and cursive writing. As a result, customers would likely overlook the MOB’s branding and instead focus on the eye-catcher that is the multicolored monogram copy. On top of all this, LG emphasized, “the “luxury brand” cushion compact foundation that is most worthy of collection” in its marketing, which shows an intention to free-ride on Louis Vuitton’s substantial fame and goodwill. Consequently, the IPC affirmed that LG infringed on LV’s trademarks.

Two infringements for the price of one

However, that was not the only hit for the defendant. The use of the colorful monogram designed by Murakami constituted an infringement of his copyright as artist as well. The classic design is the result of Takashi Murakami’s substantial creative talent and constitutes a protected work. For the same reasons as above, fair use of it fails. As the relevant customers would not find the use of the Monogram Multicolor humorous, they would just be confused as to the origin. Therefore, the products at issue did not have a transformative value.

Parody lessons to take home

If you, dear reader, would like to parody a famous trademark, it is wise to take caution. Do not wake a sleeping lion. If you do decide to be daring, make sure that relevant customers are culturally equipped to even understand what you are trying to say. While American culture has a pronounced influence on many countries on earth, that doesn’t that everyone understands the finer points of American in-jokes. Parodists should keep in mind not to over-rely on cultural tropes they themselves know but others may not.

The case is Taiwan Intellectual Property Court 2019 Minshangshangzi No. 5.