Article 70, subparagraph 2 of the Taiwan Trademark Law: knowingly using words contained in another person’s well-known registered trademark as the name of a company, business, group or domain or any other name that identifies a business entity, and hence there exists a likelihood of confusion on relevant consumers or a likelihood of dilution of the distinctiveness or reputation of the said well-known trademark.
Case: JIU TANG Development Co., Ltd VS JIU TANG Construction Co., Ltd
Synopsis：
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JIU TANG Development Co., Ltd (plaintiff) |
JIU TANG Construction Co., Ltd (defendant)
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Company establishment date |
On December 6, 1977, with “JIU TANG” Development Co., Ltd." as the company name. It applied to the Ministry of Economic Affairs for registration and was approved for establishment. On August 24, 1994, the company name was changed to: “JIU TANG”Development Co., Ltd. |
Established and registered "JIU TANG Construction Co., Ltd." with Ye Rongji as the legal agent on December 19, 2014. |
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Trademark registration date |
On June 8, 2015, JIU TANG Discovered that the trademark registration was stolen a march on them. First, they submitted an application for class 36 and an opposition for class 37. |
Application for Class 37 on January 20, 2015. |
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Attribution of trademark rights |
Successfully revoked the trademark that was stolen a march on them through the opposition. |
Submitted an opposition for the application of the class 36 of JIU TANG Development Co., Ltd. on September 23, 2016. After examining, the objection was invalid on August 22, 2018. |
Trademark Application Strategy of JIU TANG Construction Co., Ltd. (defendant)
The result of the judgment
• The plaintiff's prosecution claimed that the defendant used "JIU TANG" as the trademark and company name, which violated the trademark law and fair trade law and should be 1. Stop using trademarks; 2. Rename and; 3. Publish judgment.
• In the first instance, plaintiff's 1.3 won and 2. lost (the defendant didn't need to renamed).
• The plaintiff appealed 2. In the second instance, the plaintiff won. The defendant should be renamed. (register with the Taichung City Government for the company name change to a name that doesn't contain the same or similar to "JIU TANG".)
Dispute 1
In the case of "the defendant registered the company name earlier and the plaintiff registered the trademark later", ow did the plaintiff use the trademark registered later and use the trademark law to claim that the company name registered earlier by the defendant was illegal?
一、Famous trademark
According to Article 30, paragraph 1, subparagraph 11 and Article 70, paragraph 1, subparagraph 1 and 2
a. Countless awards: JIU TANG Development Co., Ltd. has been widely known since 1994, and has invested a lot of money in publicity and efforts to maintain its business and service quality. The build cases by it has also won the trust and praise of consumers. There are hundreds of articles reported by the news every year. From 2006 to 2018, it was awarded the "Taiwan Real Estate Excellence Awards" several times. Many articles on PPT also have commented from netizens: the quality of build cases by the JIU TANG Development Co,. Ltd. are very well. The first choice for buying a house is "JIU TANG".b. The MOEA and the IPO have identified "JIU TANG" was highly distinctiveness, well-known to relevant consumers and was a well-known trademark
c. On September 23, 2016, JIU TANG Construction Co., Ltd. filed an opposition to the IPO against the registered trademark No. 01778461 "JIU TANG Developer" owned by JIU TANG Development Co., LTD. On August 22, 2018, the IPO identified the "JIU TANG Developer" trademark as a well-known trademark, which was widely familiar to the relevant consumers, and judged the opposition invalid.
d. Ye Rongji, the legal representative of JIU TANG Construction Co., Ltd. had worked as a related company of JIU TANG Development Co., Ltd. : Ailimay Company. It was enough to confirm that he clearly known that "JIU TANG" was a famous trademark.
2. Evidence of actual confusion
a. Real estate-related manufacturers were unable to distinguish between the two companies. The confusion and misrecognition continued to occur, which seriously affected the operations of company.
b. Taiwan Taichung District Court also confused and misrecognized the two companies.
c. The employees of JIU TANG Construction Co., Ltd. have also confused and misidentified.
d. The real estate agency also confused and misidentified.
e. The news media also couldn't distinguish between the two, result in the continued publication of erroneous reports.
f. The average consumers were completely unable to distinguish between the two companies, and confusion and misrecognition continued to occur.
disputed trademark of JIU TANG Development Co., Ltd. has been a well-known trademark since 2005 and was registered as a registered trademark in September 2016. In other words, the disputed trademark has been a well-known registered trademark since September 2016. However, after September 2016, JIU TANG Construction Co., Ltd. continued to use "JIUTANG" as the company name. According to Article 70, subparagraph 2 of the current Trademark Law: knowingly using words contained in another person’s well-known registered trademark as the name of a company, business, group or domain or any other name that identifies a business entity, and hence there exists a likelihood of confusion on relevant consumers or a likelihood of dilution of the distinctiveness or reputation of the said well-known trademark" has constituted an infringement.
The JIU TANG Development Co., Ltd. believed that JIU TANG Construction Co., Ltd used of "JIU TANG" as the focal part of its company name has constituted an infringement of trademark rights as provided in Article 70, subparagraph 2 of the Trademark Law. Therefore, in accordance with the right of claim in Article 69, subparagraph 1, of the same law, the two persons of JIU TANG Construction Co., Ltd. be requested not use the same or similar characters as "JIU TANG" as part of the company name. And it should be registered with the Taichung City Government to change the company name, which is indeed appropriate and reasonable.
Dispute 2
How to explain that "use of company name" is trademark use?
•When releasing a build case, the "company name" and the "construction name" are often combined to commend the build case by the same group or the same builder,.
For example: "Farglory Rich Downtown" and "Farglory Left Bank" of Farglory Group. In addition, the build cases use the "company name" as the source of the "brand" , it can also prove that the use of the "company name" is the "trademark use". And from the convention of the real estate development and construction industry, it is known that most of the builders will only mark the focus part of the "company name" when releasing build cases, and omit the contents of the Co., Ltd. Consumers will recognize part of the company’s name as the “brand” of the builder. Therefore, "Company Name" and "Trademark Use" have been combined into one and cannot be divided
•JIU TANG Development Co., Ltd. began to use the name "JIU TANG" in 2005, and combined it with the name of the build cases. Invested a lot of money in "JIU TANG" for marketing promotion, such as "JIU TANG Winner", "JIU TANG Europe Town" and other build cases. JIU TANG Construction Co., Ltd. uses the combination of "company name" and "trademark", so "use of company name" and "use of trademark" are "integrated into one" and cannot be divided specifically. It to commend their service source of real estate development and construction. and could make relevant companies or consumer identify the source of mark.
•JIU TANG Construction Co., Ltd. recognized that "use of company name" is "use of trademark". In the opposition, the "JIU TANG" trademark of JIU TANG Development Co., Ltd., JIU TANG Construction Co., Ltd. has recognized that its "use of company name" is "trademark use". And JIU TANG Construction Co., Ltd. applied for a trademark with "JIU TANG Construction Co., Ltd.", which clearly showed that JIU TANG Construction Co., Ltd. used "company name" as "trademark".
•Based on the above, the original judgment divided the "company name" and "trademark use" and believed that JIU TANG Development Co., Ltd. only had to exclude JIU TANG Construction Co., Ltd. from "trademark use". And the legal opinion allowed JIU TANG Construction Co., Ltd. continued to "use company name" obviously wrong. As a result, ordinary consumers would still be confused and misidentified because the two companies use the same name.
Completion
•The dedicated company name doesn't mean dedicated brand name. Even if every company takes the company name as the brand name in the construction industry. But still must submit a trademark to the IPO for protection.•Although the trademark and the company established belong to different units, it still has the right to request the company name to be corrected when the trademark is a well-known trademark. That is to protect their rights and avoid confusing consumers, causing damage to consumers’ rights.
•Evidence of trademark use must be kept intact
Cited Laws
Taiwan Trademark Law
Article 30
Other grounds for refusal of registration
being identical with or similar to another person’s well-known trademark or mark, and hence there exists a likelihood of confusion on the relevant public or a likelihood of dilution of the distinctiveness or reputation of the said well-known trademark or mark, unless the proprietor of the said well-known trademark or mark consents to the application.
Article 70
Acts deemed infringement
Any of the following acts, without consent of the proprietor of a registered trademark, shall be deemed infringement of the right of such trademark:
(1) knowingly using a trademark which is identical with or similar to another person’s well-known registered trademark, and hence there exists a likelihood of dilution of the distinctiveness or reputation of the said well-known trademark;
(2) knowingly using words contained in another person’s well-known registered trademark as the name of a company, business, group or domain or any other name that identifies a business entity, and hence there exists a likelihood of confusion on relevant consumers or a likelihood of dilution of the distinctiveness or reputation of the said well-known trademark.
Article 69
A proprietor of a registered trademark is entitled to demand a person who infringes or is likely to infringe the trademark right to stop or prevent such infringement.
Reference source of part of the information：https://ipcase.blogspot.com/2019/05/v_2.html
