Levi Strauss sews up design and trademark infringement cases

Levi Strauss & Co has successfully enforced its rights in pattern and stitching designs against two Thai jeans manufacturers.

The first case is a rare example of the Intellectual Property and International Trade (IP&IT) Court imposing criminal sanctions upon a violator of the Patent Act (Levi Strauss & Co v Thavornwattanapong, Red Court Case 4658/47, November 15 2004, published March 29 2005).

Phisit Thavornwattanapong, a local manufacturer, produced jeans of which the overall pattern and seam stitch designs, and the stitching on the back pocket copied Levi Strauss's Engineered Jeans design patents. During a raid, the police seized thousands of pairs of the infringing jeans. Thavornwattanapong was charged with criminal violations of the Thai Patent Act. Three issues were raised before the IP&IT Court.

First, Thavornwattanapong argued that the search warrant lacked language permitting seizure of goods that infringed Levi Strauss's design patents; rather, the warrant permitted seizure of goods that infringed Levi Strauss's trademarks. However, the court agreed with Levi Strauss that the seizure was legal. During the search, police found a number of jeans and with reasonable cause, formed reasonable suspicion that the jeans infringed Levi Strauss's design patents. Even though the offence was committed on Thavornwattanapong's private property, Section 92(2) of the Criminal Procedure Code of Thailand permits police to search private properties so long as they have a valid search warrant.

Second, all three of Levi Strauss's design patents were presented to the court so that they could be compared to Thavornwattanapong's jeans. The patent examiner was also called to testify about the legal and exclusive rights afforded to Levi Strauss by virtue of its patent registrations, the validity of which have never been contested by third parties.

The court found that Levi Strauss was the rightful owner of the three design patents and accordingly entitled to full protection under Thai law.

Third, having considered Levi Strauss's design patents and Thavornwattanapong's testimony, wherein Thavornwattanapong admitted having seen Levi Strauss's jeans bearing one of the design patents at a Levi Strauss store, the court found that Thavornwattanapong should have known that Levi Strauss owned such designs.

Furthermore, the court found that Thavornwattanapong had a criminal intent to manufacture jeans with designs that were similar or identical to Levi Strauss's patented designs. Hence, Thavornwattanapong's claim that he was merely filling customers' orders was inadequate to refute the ample amount of evidence that Levi Strauss had presented in respect of Thavornwattanapong's bad-faith intent to copy its designs.

Accordingly, the IP&IT Court convicted Thavornwattanapong of patent infringement and fined him Bt30,000.

In the second case, the police seized numerous unfinished jeans bearing marks identical or similar to several of Levi Strauss's design and word marks. The police also seized the equipment used to manufacture the jeans. Levi Strauss filed a private criminal action in the IP&IT Court on the basis of its Thai trademark registrations.

In June 2002 the IP&IT Court found Thidakul Jongsongserm, the owner of the factory raided by the police, guilty of possession of goods bearing marks that were copies of Levi Strauss's trademarks under Section 108 of the Trademark Act and Section 272 of the Penal Code. It sentenced her to 18 months in prison and directed forfeiture of all of the seized goods and equipment, worth in excess of $25,000. Jongsongserm appealed to the Supreme Court.

The Supreme Court affirmed the IP&IT Court's decision (Dika Case 12540/2547, June 14 2005). The court held that the stitching design on the back pocket of the unfinished jeans found on Jongsongserm's premises was confusingly similar to Levi Strauss's registered 'arcuate design' trademark and therefore constituted forgery of a registered trademark under Thai law.

In addition to pockets bearing the forged arcuate design, police found 1,200 fabric labels bearing the mark LEVE STRAUSS & CO. There were also jeans with an inverted and curved 'V' shaped design on the back pockets where, if the seam of the inverted 'V' was removed, the remaining design would be identical to Levi Strauss's arcuate design.

Based on the testimony of the lawyers and the commanding police captain at the scene of the raid, the court held that the following was evidence that Jongsongserm possessed the requisite bad-faith intent to commit the act of forging Levi Strauss's arcuate design and LEVI'S marks:

• the presence of the infringing sundries and back pockets found together with the unfinished jeans in the factory;
  
  
• Jongsongserm's testimony that she had been in the clothing business for more than 20 years; and
  
  
• her testimony that she had seen genuine Levi Strauss's products.

Liza Leung, Nuttaphol Arammuang and Edward J Kelly, Tilleke & Gibbins International Ltd, Bangkok