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IP Newsletter | Summer/Fall 2016
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TRADEMARK, DESIGN & UNFAIR COMPETITION
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No More Playing – A New Victory for Hermès in Korea
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Fresh off of its recent victories in the "Ginger bags" case,1 Hermès recently won another civil lawsuit in Korea based on the catch-all provision of the Unfair Competition Prevention and Trade Secret Protection Act ("UCPA") against a different Korean entity called "Play No More." The UCPA catch-all provision protects a party's right to profit from work and intellectual property that it has produced at considerable effort or investment (whether or not registered in Korea), by prohibiting the unauthorized commercial use of such work and IP by others in a manner that contravenes fair trade practice or competition order.
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The defendant in this case (Play No More) was selling imitations of the famous Hermès Kelly and Birkin bags on which it had affixed various patches of eyes, lips and other designs, such as in the following image:
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The Seoul Central District Court confirmed that the designs of the Kelly and Birkin bags were protected by the catch-all provision, having been produced after substantial investment and effort by Hermès. The Court highlighted the fact that costly luxury handbags generally are manufactured in small quantities and purchased by relatively few customers, that the reputation and image of such handbags are part of their design and appeal, and that such elements are key to the value of these products and thus important drivers for their purchase. The Court further noted that because Hermès' trademarks were found only inside their products, it was the unique characteristics of the bags themselves that made them distinctive. Therefore, the Court concluded that these designs should be given legal protection and not given over to the public domain.
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Play No More argued that there was no risk of consumer confusion, which the Court acknowledged. Nevertheless, the Court found that the defendant had imitated the shapes of Hermès' bags and that this had contributed considerably to the popularity enjoyed by Play No More's products as well as allowing them to charge abnormally high prices for what were fake leather products. The Court also noted that Play No More's slogan, "Fake For Fun," implied that Play No More intended to free-ride on Hermès' goodwill. The Court concluded that Play No More's unauthorized actions unfairly took advantage of Hermes' work product and were conducted in a manner contravening fair trade practices and competition order.
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As a result, the court ordered a permanent injunction on the manufacture and sale of the infringing products and damages in the amount of KRW 100 million (about USD 83,600). The District Court's decision is currently under appeal.
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For more details on the Ginger bags case, please see our Spring 2015 newsletter here and Spring 2016 newsletter here.
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Back to Main Page
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If you have any questions regarding this article, please contact:
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For more information, please visit our website: www.ip.kimchang.com
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