Repair Shop That Dismantled and Recrafted Louis Vuitton Bags: "Personal Request for Reformation Is Not Trademark Infringement"

The Supreme Court of Korea has ruled that providing reformation services for luxury goods at the request of an individual for personal use does not constitute trademark infringement. This is the Court’s first decision on trademark infringement by a reformation service provider. Observers expect the ruling to have a broad impact, as it is drawing attention in the United States, Europe, and Japan.
On the 26th, the Second Division of the Supreme Court of Korea, presided over by Justice Kwon Young-jun, overturned a lower court ruling that had found in favor of luxury brand Louis Vuitton in its lawsuit seeking an injunction and damages for trademark infringement against a reformation service provider, identified by the surname Lee, and remanded the case to the Patent Court of Korea.
From 2017 to 2021, Lee dismantled Louis Vuitton bags received from customers and used the original materials, such as fabric and metal parts, to create bags and wallets of different sizes, shapes, and uses. In 2022, Louis Vuitton filed suit, arguing that Lee’s work undermined the brand’s functions of indicating origin and guaranteeing quality, thereby infringing its trademark rights.
The Supreme Court of Korea held that when a reformation provider offers modification or processing services on order from the owner for personal use, this does not amount to "use of a trademark" under the Trademark Act. It found that Lee’s conduct—receiving instructions from the owner on the design, shape, and purpose before reformation, carrying out the requested work, and returning the finished item to the owner—could not be regarded as trademark infringement.
The Supreme Court of Korea also set out criteria for when reformation can constitute trademark infringement. Even if a service appears to be provided for the owner’s personal use, infringement may be found where, in substance, the reformation provider controls and leads a series of reformation processes, produces and sells the reformed products, and distributes them in the market as its own goods under special circumstances. The Court added that the burden of proving such circumstances lies with the trademark holder.
hwlee@fnnews.com Lee Hwan-joo Reporter