Refashioning a Louis Vuitton Bag Into a New Product Is Not Trademark Infringement, Court Rules

The Financial News reported that the Supreme Court of Korea has ruled that a service provider who dismantled luxury bags and turned them into new products such as wallets did not infringe trademark rights.
The Second Division of the Supreme Court of Korea, with Justice Kwon Young-jun of the Supreme Court of Korea presiding, overturned the lower court’s decision in a lawsuit filed by Louis Vuitton against refurbisher A seeking an injunction against trademark infringement and related relief, and remanded the case to the Seoul Central District Court.
The Supreme Court of Korea held that when a refurbisher accepts a request from a bag owner to refashion the bag for the owner’s personal use and returns it to that owner, this does not constitute "use of a trademark" under the Trademark Act, and therefore does not amount to trademark infringement.
However, the Court added a caveat: in exceptional cases where a refurbisher actively promotes such services, produces and sells refashioned products, and allows them to be distributed in the market through secondary or tertiary sales, the conduct may constitute "use of a trademark" under the Trademark Act and could amount to trademark infringement.
Previously, A had operated a business repairing and making bags and wallets. From 2017 to 2021, A used fabric taken from customers’ Louis Vuitton bags to produce bags and wallets of different sizes, shapes, and purposes.
A charged between 100,000 and 700,000 won for each refashioned item, with total sales reaching 23.8 million won. A argued that the refashioned items were not mass-produced, resold, or otherwise distributed, and therefore could not be regarded as "goods" under the Trademark Act, meaning there was no trademark infringement.
Both the first and second instance courts, however, found that the refurbisher’s conduct did constitute trademark infringement and ruled in favor of Louis Vuitton. The trial court ordered A to "pay Louis Vuitton 15 million won in damages."
The Supreme Court of Korea has now reversed those decisions and declined to recognize trademark infringement for refashioning carried out for the owner’s personal use. The Court had previously held a public hearing on this case in December last year.
At that hearing, Louis Vuitton argued that "even after refashioning, the products continue to use the trademark owner’s registered mark, thereby infringing trademark rights," and claimed that consumers might mistake the refashioned items for products actually released by the brand, creating a risk of damage to its reputation.
hwlee@fnnews.com Lee Hwan-joo Reporter