Date: 19 March 2026

【Volume 168】

A recent judgment from the Intellectual Property and Commercial Court （Intellectual Property and Commercial Court, 2024 Ming Zhuan Su Zi No. 21 Judgment）addresses the intensifying legal disputes surrounding the popular “deep-grooved, cubic-column” luggage design. This case centers on a design patent conflict and overlapping issues of unfair competition. It underscores a pivotal legal principle: as a specific product form evolves into a prevailing market trend, the scope of similarity protected by a design patent may be correspondingly narrowed. The court’s analysis of design patent infringement and its interpretation of "representations of goods" under the Fair Trade Act provide timely and instructive insights for the industry.

Case Facts and Litigation Background

• Plaintiff (Patentee): DESENO LUGGAGE GLOBAL CO., LIMITED
• Disputed Patent: Taiwan Design Patent No. D199586 for “Part of Luggage”
• Defendant: Origin Rise International Co., Ltd. (and its responsible persons)
• Disputed Product: “MONARCH 30-Inch German Bayer Fashion 2:8 Wide-Body Luggage”

1. Plaintiff’s Claims

• Patent Infringement:

The plaintiff alleged that the defendant’s product incorporates the design elements of the disputed patent, including a combination of decorative strips, handles, and foot pads, thereby constituting willful infringement.

• Violation of the Fair Trade Act:

The plaintiff alleged that five key features of its product (i.e., the wave patterns, front handle, foot pads, edge guards, and trademark area) constitute “well-known representations of goods” (Article 22 of the Fair Trade Act). The plaintiff argued the defendant’s conduct caused confusion for the consumers and constituted “free-riding” on business reputation (Article 25 of the Fair Trade Act).

2. Defendant’s Defense

• No infringement:

In response, the defendant emphasized that the shapes of the decorative strips differ significantly (wave-shaped vs. flat-curved), as well as the steering details, resulting in a distinct overall visual impression.

• Patent Invalidity:

In addition, the defendant cited prior art (such as a Porsche collaboration model) to demonstrate that the features of the disputed patent were already well known and therefore lacked novelty.

• Brand Distinction:

The defendant further argued that the disputed product clearly bore its trademark “MONARCH,” which enabled consumers to recognize the source of the goods.

Court’s Reasoning

I. No Patent Infringement

The court adopted the perspective of an “average consumer” and applied the principle of “overall observation and comprehensive assessment”:

1. Standard of Judgment: The Perspective of an Average Consumer

When conducting an infringement comparison, the court did not evaluate the designs from the perspective of a professional designer or patent examiner, but rather through that of an average consumer when purchasing goods.

• Method of Observation:

The court applied the principle of “overall observation and comprehensive assessment,” rather than isolating individual design elements for separate comparison.

• Likelihood of Confusion:

The key consideration of the case was whether the overall appearances of the disputed product and disputed patent are sufficient to cause confusion among consumers, thereby leading to a likelihood of confusion.

2. Three-Tiered Comparison of Visual Elements

The court broke down the product design into different levels and assigned varying weights to evaluate the overall visual impression:

(1) Dominant Visual Features (Core Weight)

• Design of Decorative Strips:

In this case, the decorative strips occupied a significant portion of the luggage’s exterior and were immediately noticeable to consumers.

• Court’s Finding:

The “wave-shaped” strips of the disputed patent and the “flat-curved” strips of the defendant’s product exhibit significant differences in both visual appearance and tactile perception. Such fundamental distinctions in large-area features are the primary key to the court’s finding of non-infringement.

(2) Spatial Arrangement and Direction (Configuration Weight)

• Turning Design:

The disputed patent employed a “slanted and curved” wave-shaped horizontal strip on the top side of the luggage, whereas the disputed product featured “flat strips with right-angled turns.”

• Spacing and Alignment:

The spacing between the decorative strips on the back of the disputed patent alternated between wider and narrower intervals, whereas the defendant’s product used evenly spaced strips.

The Court held that these configurational details played a decisive role in the overall visual impression of the designs.

(3) Generic Designs and Well-Known Features (Lower Weight)

• Basic Configuration:

The cubic column proportion of the luggage was considered a commonly used design in the industry.

• Functional Components:

Elements such as circular shallow grooves, long rectangular handles, and small rectangular food pads had already been disclosed in prior art (e.g., the Porsche collaboration luggage) and thus were regarded as well-known features in the market.

• Court’s Finding:

Although the two products are similar in these elements, given that such features constitute “generic designs,” the patentee cannot monopolize the overall form. Accordingly, such similarities are insufficient to support a claim of infringement.

3. Limitations Imposed on the Scope of Protection by Prior Art

The court specifically stated that the scope of protection of a design patent is restricted by “prior art.” In other words, when the form of a product has become a prevailing trend or a well-known style in the market, the “scope of similarity” that the design patent may assert would be correspondingly limited. Under such circumstances, only when a product is “highly similar” to the patented features can infringement be established.

II. No Violation of the Fair Trade Act: Boundary Between Well-Known Representations and Unfair Competition

The court also clarified the legal boundary regarding whether a deep-grooved, cubic-column luggage design should be protected under the Fair Trade Act.

1. Lack of Distinctiveness:

The five major features claimed by the plaintiff (i.e., the wave patterns, edge guards, foot pads, etc.) had already appeared in prior art, therefore constituting “generic design” commonly seen in the market, rather than “marks” used to identify a specific manufacturer or business source.

2. Failure to Prove Secondary Meaning:

Although the plaintiff had engaged in substantial advertising, the promotional materials primarily emphasized aesthetic and functional aspects of the product. Thus, the advertising failed to prove that consumers could identify the manufacturer based solely on the product's shape without seeing a brand.

3. No Free-Riding on Business Reputation or Deceptive Trade Practices:

The defendant clearly labeled its own brand on the product; such actions constitute legitimate market competition and do not constitute free-riding on business reputation or deceptive trade practices.