Issey Miyake Lands Unfair Competition Win in Japan Over Copycat Bao Bao Bags
image: Issey Miyake
Issey Miyake may have made his name based on his experimental and innovative approach to apparel, but the Japanese designer has been heavily boosting his brand’s bottom line by way of a collection of handbags. Since launching his Bao Bao bags, which consist of geometric-shaped pieces that “change flat surfaces into three-dimensional ones [when folded], creating a new form,” the collection has consisted of some of the best-sellers for the nearly 50-year old company, and with such popularity has come rampant copying.
The brand’s Bao Bao bags – which made their debut in 2000 – are some of the “most copied in the world,” says Issey Miyake’s President Director General for Europe, Tempe Brickhill. The influx replicas that plague Tokyo-based Miyake’s globally popular and heavily-copied bags means that the company has been forced to wage a war against fakes – from counterfeits being passed off by retailers in its native Japan to dead-ringers being sold for cheap in the U.S., including on Amazon’s marketplace.
In the midst of an ongoing fight rival bag-maker centering on its Bao Bao bags, Issey Miyake has landed in a win in a separate but similar case. The Tokyo District Court sided with Issey Miyake in a decision last month, holding that Largu Co., Ltd., the parent company of handbag maker Avancer – which began manufacturing and selling exact replicas of Miyake’s Bao Bao bags – is on the hook for violating Japan’s Unfair Competition Prevention Act.
At the center of the case are “designs that may be mistaken for and misunderstood” as being Issey Miyake products, the brand argued in its complaint, citing claims of unfair competition and copyright infringement.
Similar to U.S. trademark law, which defines infringement as the unauthorized use of a trademark on or in connection with goods and/or services in a manner that is likely to cause confusion, deception, or mistake about the source of the goods and/or service, Japan’s Unfair Competition Prevention Act makes it illegal to “create confusion with another person's goods or business by using [trademark] belonging to a business … that is identical or similar to the another person's [trademark] that is well-known among consumers as belonging to that person.”
Issey Miyake bag (left) & Avancer bag (right)
Because the appearance of Issey Miyake’s Bao Bao bags, namely, the geometric shapes that make up the bag designs, is distinctive and due to the fact that the design “obtained a certain degree of popularity and reputation as a source indicator of the Issey Miyake [brand] by the time [Avancer] launched disputed bags in 2016,” the court found that they are protectable under the Unfair Competition Prevention Act.
As noted by Tokyo-based trademark lawyer Masaki Mikami, “In assessing the likelihood of confusion [between the plaintiff and defendant’s bags], the court dismissed Largu Co., Ltd.’s counterargument centering on the difference between the size and the exact shape of the triangular elements it uses and the ones used by Issey Miyake.” The court was unpersuaded, holding that despite the differences in the individual triangles, its bags, as a whole, “give rise to a same visual effect as Issey Miyake’s bags.”
Moreover, as noted by Mr. Mikami, unlike in the U.S., “Price difference is not a material factor to negate a likelihood of confusion [if] consumers [think of] the Issey Miyake when they see the defendant’s bags.”
While the court refused to side with Issey Miyake on its copyright infringement claim, holding that its bags are plaintiff’s goods are more “suitable for industrial design” protection, it did hand Miyake a win on unfair competition grounds, permanently barring Largu Co., Ltd. from manufacturing and selling any copycat Bao Bao bags going forth, and ordering the company to pay nearly $700,000 in damages to Issey Miyake.