In a decision rendered on June 27, 2023, Taiwan’s Intellectual Property and Commercial Court (“IPC Court”) found the product design alleged by the plaintiff cannot be eligible for copyright or trade dress protection.
The case arose out of dispute between two e-commerce vendors. The plaintiff sold its moisturizer product under the brand “Lily Rosee”, while the defendant sold similar product under the brand name “Li Yan”. According to the plaintiff, its product (see below, on the left) is eligible for protection as artistic work under Copyright Act. Additionally, since the defendant’s product (see below, on the right) also demonstrates similar bottle appearance with cylindrical body, circular cap, and pink hyaluronic acid solution inside, the plaintiff argued that defendant’s unauthorized use of similar product appearance not only infringes plaintiff’s copyright over its product appearance, but also constitutes trade dress infringement or unfair competition under Articles 22 and 25 of Fair Trade Act.
The IPC Court rejected all of plaintiff’s arguments, and ruled in defendant’s favor.
- On the issue of copyright, the IPC Court found the aesthetic features alleged by the plaintiff insufficiently demonstrate the required originality for copyright protection. The IPC Court posited that plaintiff’s product appearance is quite common. Taking into consideration the aluminum cap, glass bottle, the brand name “Lily Rosee” in white color, and the pink solution contained in the bottle, the IPC Court found such elements are similar with other commonly-seen cosmetic product appearance, and unable to demonstrate plaintiff’s artistic skills or workmanship. Thus, plaintiff’s product appearance is not eligible for copyright protection.
- The plaintiff also argued that defendant’s product violated Article 22 of Fair Trade Act, which prohibits any commercial activities that may engender confusion among the public through use of a mark or symbol which is identical or similar to another’s well-known trade dress or other source identifiers. Said trade dress or other source identifiers encompass not only unregistered trademarks but also names, product packaging, product configuration, outer appearance and any other signs identifying the source of goods or services. However, the IPC Court found that evidence submitted by the plaintiff, including blogger’s essays, internet news, customer reviews, consumer’s inquiry, etc, did not show the relevant market share of the plaintiff’s product, nor the degree of its popularity among the relevant public. Hence, it is baseless for plaintiff to allege that its product appearance is commonly known to the public.
- Further, while the “confusion” prescribed under Article 22 of Fair Trade Act does not require “actual confusion”, the IPC Court elaborated that the plaintiff still needs to prove there is a “specific risk of confusion” caused by the defendant act, such as evidence showing the degree of the fame of the product appearance, the overlapping of the target consumers, the price gap, the degree of similarity of business model, and/ or existence of competition relation between the parties.. The IPC Court found that although both plaintiff’s and defendant’s products were available on defendant’s shop in Shopee, there is no specific risk of confusion shown in the records.
- Lastly, on the issue of Article 25 of Fair Trade Act, which provides that “no enterprise shall otherwise have any deceptive or obviously unfair conduct that is able to affect trading order”, the IPC Court opined that there must be clear and convincing evidence showing the trading order and fair competition would be harmed by the defendant’s alleged deceptive or unfair conduct. Here, the IPC Court sided with the defendant, because none of the evidence submitted by the plaintiff showed defendant’s intent to deceive or mislead the consumers, nor did the plaintiff explain why using a bottle that is commonly seen in the cosmetic industry would affect the trading order.
In view of the above, comparing to product appearance that is protected as 3-D trademark or design patent, the plaintiff who intends to apply Copyright Act or Fair Trade Act to product appearance may face an uphill battle. While originality for copyright protection only requires minimum degree of creativity, the IPC Court seems to adopt a more stringent standard when considering utilitarian work like ordinary bottle for cosmetic solution. Since the IPC Court is known for its fast-paced schedule, it is recommended that those who wish to resort to Copyright Act and Fair Trade Act to protect their product appearances, before filing the lawsuit, should conduct a more thorough analysis on the copyrightability of the alleged product design, and, if necessary, prepare a market survey report showing the strength of reputation or distinctiveness of the alleged product.