Lee Kyung-han (58), head of Gangnamsa, who runs a repair shop in Apgujeong-dong, Gangnam-gu, Seoul, said this in an interview with ChosunBiz on the 26th, right after the Supreme Court ruling.
The Supreme Court's second division (Presiding Justice Kwon Young-joon) on the day overturned the lower court ruling that had found for the plaintiff in a trademark infringement injunction and damages suit filed by luxury brand Louis Vuitton against Lee and sent the case back to the Intellectual Property High Court.
Lee has worked in clothing alterations for 35 years. It is a small shop of about 40 pyeong, with four or five employees working together.
The dispute began with "reform." From 2017 to 2021, Lee disassembled Louis Vuitton bags entrusted by customers and used the fabric and metal ornaments to make bags or wallets of different sizes and shapes.
Louis Vuitton filed suit in Feb. 2022 against Lee, arguing that the reform acts damaged the trademark's source-indicating and quality-assurance functions and thus constituted trademark infringement.
Lee said it was "hard to understand" when first sued. Lee said, "It's common to alter clothes worn by parents and pass them down to children," adding, "I wondered why (reform) would be prohibited just because it's a luxury bag, so I decided to fight the suit."
But Lee lost consecutively in the first and second trials. The courts held that the reformed products could be traded on the secondhand market and thus constituted "goods," independent objects of commerce. They also found it constituted trademark use because ordinary consumers could mistakenly believe the source was Louis Vuitton. They ordered Lee to pay 15 million won in damages.
The Supreme Court took a different view. It found that when an item is modified or processed on commission from the owner for personal use, it is, in principle, not "use of a trademark" under the Trademark Act. If there is no intent to distribute separately, it cannot be deemed trademark infringement.
Lee said, "In the first and second trials, even a private individual's free use of their own property was treated as illegal," adding, "Customers were anxious that the very act of leaving items for repair could be a problem, but this ruling made it legal."
The lawsuit, which lasted nearly four years, was quite a burden. Lee said, "The legal expense was significant, and it was something that would have ended if I had just stopped," but added, "Because it was a matter of common sense, I chose to endure and see it through."
However, the Supreme Court also held that if an owner commissioned a reform with the intent to distribute and thus infringe the trademark, and the repairer knew or could have known this but became involved, they could bear joint responsibility.
Lee agreed with this view as well. Lee said, "If you mass-produce and release it to the market, it's obviously illegal," adding, "Reform that repairs an item entrusted by a customer into the desired form and returns it is different."
Lee said, "I am pleased that this ruling allows those in the same industry to work with peace of mind," adding, "I believe it confirms consumers' right to decide freely how to use their own property."