UNIQLO sues SHEIN for imitating shoulder bags - explanation from a patent attorney
Uniqlo sues SHEIN for imitating shoulder bags
Uniqlo is suing SHEIN for copying its shoulder bags.
According to an article in the Nihon Keizai Shimbun
On the 16th, Uniqlo, a subsidiary of Fast Retailing, filed a lawsuit against Chinese online retailer SHEIN, claiming that the sale of counterfeit Round Mini Shoulder Bags violates the Unfair Competition Prevention Act, and is seeking damages and suspension of sales. announced that it has filed a lawsuit against the operating company. This is the first time in Japan that Uniqlo has sued a management company for selling counterfeit products. The company decided to file a lawsuit because it would have a major impact on its business.
The lawsuit was filed with the Tokyo District Court on December 28, 2023. UNIQLO stated that ``the shape of the counterfeit products sold by SHEIN closely resembles the shape of our products,'' and explained that ``sales of counterfeit products are seriously undermining the high level of trust that customers have in the UNIQLO brand and product quality.'' ing. The company is seeking approximately 160 million yen in damages for the sale of counterfeit products, as well as payment of late fees.
The above article is quoted from the URL belowhttps://www.nikkei.com/article/DGXZQOUC168O50W4A110C2000000
Shoulder bags sold by Uniqlo
The shoulder bags sold by Uniqlo are thick and semicircular in shape.
The above image is taken from the UNIQLO sales page at the URL below.
https://www.uniqlo.com/jp/ja/products/E461053-000/00?colorDisplayCode=10
Apparently it's going viral on SNS.
The following explanation is quoted from the article at the following URLhttps://www.cnn.co.jp/business/35213997.html
The round mini shoulder bag is a semicircular crossbody bag. It is said to be easy to use and reasonably priced, and it became popular on social media from 2022 to last year, causing a boom in which it continued to sell out.
It has been featured in media around the world and was selected as the "hottest item" in the first quarter of last year in the rankings of the British fashion search site Lyst
The following explanation is quoted from the article at the following URL
https://www.bbc.com/japanese/68002892
Uniqlo's round mini shoulder bag has been a big hit in online sales, with TikTokers showing off just how many items it can hold.
Because of its storage capacity, some people call it the ``Mary Poppins bag'' after the Disney movie ``Mary Poppins'' (1964). There is a scene in this movie where the main character pulls out a long hat rack from his bag.
Videos related to round mini shoulder bags have received millions of likes over the past year. Some videos have been posted of people playfully pulling out items such as laptops, water bottles, candles, and even robot vacuums.
This nylon bag is reportedly Uniqlo's best-selling bag in history. It sells for 1,500 yen in Japan and 14.90 pounds in the UK.
While Uniqlo's products cost 1,500 yen, SHEIN's products cost 632 yen, less than half the price of Uniqlo's products.
According to reports, SHEIN products are very similar to Uniqlo products.
The following is the voice of the city (quoted from the article at the URL below)
https://news.yahoo.co.jp/articles/bb4ac30a5c72d2bb8092218dfbebe5e8ff7fbdb9
Office worker (20s) "I thought they looked alike. If I had them, I wouldn't be able to tell which is which."
Office worker (20s) "If I plan on using it for a long time, I'll buy UNIQLO, but if I don't have any particular plans, I'll buy at SHEIN."
Office worker (40s) "It's similar, but if you ask me if it's a copy, I don't think it's that much of a design..."
What is SHEIN?
The following information is quoted from the article at the following URL
https://www.bbc.com/japanese/68002892
Founded in China in 2008, SHEIN has seen sales surge during the coronavirus pandemic due to an increase in online shopping users and a marketing strategy focused on social media.
According to the company's website, it has approximately 10,000 employees worldwide and sells products to more than 150 countries.
The company is currently based in Singapore and is said to be considering listing its shares on the New York Stock Exchange.
SHEIN has also been the subject of controversy. The company's low-priced products have raised questions about its environmental footprint and hiring practices. According to the Japan Quality Assurance Organization, "environmental footprint" refers to "not only the impact of greenhouse gases on climate change, but also the impact of multiple environmental impact areas such as human health, quality of life, and ecosystems." "Environmental impact assessment" that evaluates and quantifies it using certain calculation standards.
In response to these concerns, the company says that by producing in small quantities it is more efficient and reduces waste. It also says it has a "zero tolerance" policy regarding forced labor.
The company says it "respects the intellectual property rights of designers, artists, and others." However, online, small business owners have criticized SHEIN for copying their products.
A patent attorney explains Uniqlo's lawsuit
Uniqlo is suing SHEIN, claiming that its sale of round mini shoulder bags violates the Unfair Competition Prevention Act.
As a patent attorney, I am surprised that the lawsuit was filed not for violation of the Design Act, but for violation of the Unfair Competition Prevention Act.
UNIQLO does not hold the design rights for the round mini shoulder bag. In other words, even if Uniqlo wanted to sue for violation of the Design Act, it could not.
It may be that the design application is pending and the design right has not been registered, but I looked into the number of design rights held by Uniqlo, or Fast Retailing Co., Ltd., and found that there were only 21. It is highly likely that you have not filed a design application.
It is surprising that a large global company like Uniqlo only owns 21 design rights.
This is a violation of the Unfair Competition Prevention Act, but this refers to acts of imitation (Article 2, Paragraph 1, Item 3 of the Unfair Competition Prevention Act).
In order to stop a counterfeiter from imitating an act in violation of the Unfair Competition Prevention Act, 1) the counterfeit product must be substantially the same as the counterfeit product, and 2) it must be within three years from the date of first sale. is a requirement.
① Regarding whether the counterfeit product is substantially the same as the counterfeit product
According to reports, SHEIN's products are very similar to UNIQLO products, but we are very strict in determining (1) that the counterfeit product is substantially the same as the counterfeit product, which is a violation of the Unfair Competition Prevention Act. will be done.
If it is a complete copy, it can be said that the implementation is the same, but if there is even a slight difference, it may be determined that the implementation is not the same.
In the Dragon Sword Keychain Case (Tokyo District Court Judgment, December 25, 1996), the following judgment was made regarding the same implementation.
After comprehensively determining the difficulty of coming up with the idea for the modification, the content and extent of the modification, the morphological effects of the modification, etc., the modification will bring about appropriate morphological characteristics and closely resemble the shape of another person's already existing product. In cases where it cannot be evaluated as having the same form, it should be said that the form cannot be said to be substantially the same.
In this way, the definition of "substantive identity" in imitation of form is narrower than the definition of "similarity" in design infringement.
If UNIQLO owns the design rights for the round mini shoulder bag, then SHEIN's sale of the round mini shoulder bag is definitely an infringement of the design rights.
In the case of a design right, the effect extends not only to the same design but also to the extent that it is similar.
In the lawsuit, the defendant, SHEIN, countered by claiming that there were parts that were different from the round mini shoulder bags sold by Uniqlo, and that claim was accepted, resulting in a violation of the Unfair Competition Prevention Act (Unfair Competition Prevention Act 2). There is a possibility that it will be ruled that Article 1, Paragraph 1, Item 3) is not met.
Considering this, I think Uniqlo should have filed a design application and obtained the design rights for the round mini shoulder bag.
② Within 3 years from the date of first sale
Acts of imitation under the Unfair Competition Prevention Act (Article 2, Paragraph 1, Item 3 of the Unfair Competition Prevention Act) can only be claimed for three years from the date of first sale in Japan.
On the other hand, the term of protection under a design right is 25 years from the date of the design application.
This is a very long protection period, which is longer than the 20 years from the date of filing of the patent application, which is the protection period for patent rights.
UNIQLO does not hold the design rights for the Round Mini Shoulder Bag, so if 3 years have passed from the date that UNIQLO first sold the Round Mini Shoulder Bag in Japan, it will be possible to sell a product that is exactly the same as the Round Mini Shoulder Bag sold by UNIQLO. can be manufactured and sold without any problems with intellectual property rights.
Considering this, I think Uniqlo should have filed a design application and obtained the design rights for the round mini shoulder bag.
Although a written opinion stating that there is no infringement of design rights may be prepared, the design in question may clearly be a copy of a foreign brand product.
However, because the foreign brand had not filed a design application, it did not hold the design rights, and since three years had passed since it was first sold in Japan, the Unfair Competition Prevention Act Since it is not an act of copying the form of , it is possible to legally sell counterfeit products.
I will be watching with interest how Uniqlo's lawsuit progresses.
Let's apply for a design
As mentioned above, in order to protect the shape of the product, there are cases where it is not possible to take action by violating the Unfair Competition Prevention Act.
In order to protect the shape of an article, we strongly recommend filing a design application.
