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Can a Trademark Owner Assert the Trademark Well-Known Status at a Place Where Its Trademark Is Registered but Import of Their Goods Is Prohibited by Law?



The trademark rights holder ("Trademark Owner"), an international food company, has already registered the related TM "黃飛紅'' trademarks (TM "黃飛紅") in numerous countries, including Taiwan. Peanut products bearing the said trademarks, however, are prohibited by law from being imported into Taiwan. Seeing this situation as a market opportunity, a local food business counterfeited TM "黃飛紅" to create and register the highly similar TM "黃粒紅" and its related trademarks (TM "黃粒紅") for selling peanut products.

 

In response, the Trademark Owner filed opposition proceedings against the food business to cancel the counterfeit trademarks. The deciding authority rendered decisions in favor of the Trademark Owner, to which the food business appealed unsuccessfully. Dissatisfied, it initiated three administrative suits in connection with three registered trademarks among all with the Intellectual Property Court ("IP Court").

 

These three suits (Docket Nos.: IP Court Administrative Suits 106-Xing-Shang-Su-Zi-161, 106-Xing-Shang-Su-Zi-162, and 106-Xing-Shang-Su-Zi-163) were respectively adjudicated by different judges. As the judges shall adjudicate independently, Lee and Li had to present these series cases in a way that would lead to multiple judges reaching consistent conclusions in favor of Lee and Li's client with respect to the common dispute in these cases, namely "Whether the Trademark Owner can assert trademark well-known status to cancel counterfeit trademarks of others at a place where it has registered its trademark(s) but import of its goods is prohibited by law." Assigned to work on these cases, I hereby provide a brief summary of our litigation strategy below.

 

We consider it our first priority to be successful in tackling the issue of determining trademark similarity. Judges of these three cases all find the following: The trademarks of both parties are identical in initial and ending Chinese characters ("黃" & "紅"); both parties utilize red pepper devices to ornament the "紅" character. The visual impression conveyed by these trademarks and their overall concept, appearance and pronunciation are extremely similar. Thus, it is possible for consumers in general to confuse both parties' trademarks due to their highly similar wordings, devices and order of composition in appearance, thus causing confusion and misidentification. It shall accordingly be concluded that both parties' trademarks are similar, and the degree of similarity is considerably high.

 

It is noteworthy that, while both parties point out that their trademarks are created based on different figures, the Court holds the following opinion: TM "黃粒紅" is based on a well-known singer "王力宏" (Leehom Wang) in terms of pronunciation, whereas TM "黃飛紅" is created by borrowing the name of a famous film figure "黃飛鴻" (Feihong Huang). Be that as it may, consumers are unable to discern these design concepts through objective observation of trademark appearance, and thus the foregoing has no bearing on the Court's determination of trademark similarity.

 

Secondly, Article 30-1(11) of the Trademark Act provides that a trademark identical or similar to a well-known trademark or mark of another person and therefore likely to cause confusion to or misidentification by the relevant public, or likely to dilute the distinctiveness or the reputation of the well-known trademark or mark, may not be registered. Nowhere in the foregoing article does it say that the "well-known trademark" as defined in this provision has to be registered in Taiwan. The Court further points out the following: The determination of whether a trademark is well-known shall be based on the perception of domestic consumers. Even if the trademark in question is not used in Taiwan or the trademark's actual use in Taiwan is not extensive, the trademark in question can still be deemed well-known if there is objective evidence showing that its extensive use abroad has made is so famous that its reputation has reached Taiwan.

 

Peanut products bearing TM "黃飛紅" are goods originating from China that are prohibited from being imported into Taiwan. However, when one considers (1) search results retrieved using multiple search engines; (2) the fact that the trademark has been granted registration in Korea, the USA and Japan; (3) that related trademarked goods have been extensively covered by Taiwanese news media and that reviews found through online search clearly indicate a high reputation; and (4) publicity and marketing information published on various newspapers, magazines, media and online shopping channels from China, and as the Court is of the opinion that people from both sides of the Taiwan Strait do frequently interact with each other through trade and travel, coupled with the fact that their language and writing are very similar, and since Taiwanese in general can purchase products made in China through the Internet, TM "黃飛紅" can still be considered well-known to the extent that its famousness has reached Taiwan, despite the trademarked goods prohibited from being imported into and sold in Taiwan.

 

In sum, the IP Court judges adjudicating all three cases all conclude that the Trademark Owner is well-known in Taiwan. Even though the food business appealing to the Supreme Court on one of the cases, but its appeal was dismissed (Docket No.: Supreme Administrative Court - Administrative Judgment 108-Pan-Zi-299.) The Supreme Court has even emphasized thus: The peanut products manufactured abroad by the Trademark Owner are duly prohibited from being imported into Taiwan, but the Trademark Owner can still use its own trademark(s) or license others to use its trademark(s) in Taiwan. That is to say, the ban imposed by Taiwanese laws and regulations on import of said goods does not mean that the Trademark Owner's rights shall be unprotected.



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