經通國際智慧產權事務所

On October 22, 2008, after the reexamination ordered by the Supreme Court, the Taiwan High Court upheld the decision of rejecting the appeal filed by Intel Corp. (Intel) against an apparel and toy exporter, Merry Kid’s Corp. (Merry Kid’s) in Taiwan. In the said appeal, Intel accused the defendant of trademark infringement based on the two companies’ similar Chinese names. The Court confirmed that the Chinese names of the two companies are similar but pointed out that as the defendant’s use of company name was not likely to confuse the relevant public or likely to dilute the distinctiveness or reputation of the appellant’s trademark, the appeal was rejected and the defendant was not liable for the NTD7 million (USD210,000) compensation claimed by the appellant.

In 1995, Intel filed a criminal lawsuit against Merry Kid's to the Banciao District Court for trademark infringement. The Banciao District Court rejected the said lawsuit based on the following reasons,

1. Merry Kid’s registered its Chinese company name with the Ministry of Economic Affairs and such conduct did not breach the Trademark Act.
2. Merry Kid’s registered its Chinese company name before the filing date of Intel’s trademark application bearing Intel’s Chinese company name. Also, the defendant’s English company name is “Merry Kid’s”, which had nothing to do with its Chinese name, so it could not prove that Merry Kid’s had taken advantage at the reputation of Intel.
3. Even though Merry Kid’s company name registration covered the business operation scope of “manufacture of the materials for wireless telecommunications and machine with wires” (related to Intel’s operation scope), in fact, Merry Kid’s only manufactured the products of cell phone covers and cell phone straps and to avoid causing confusion to the public, it had deleted the listed business operation scope.
4. The cooperation between Merry Kid's and Spunk Tour (a travel agency in Taiwan) would not confuse the relevant public and dilute the distinctiveness or the reputation of the trademarks owned by Intel.

After the subsequent appeal was rejected by the Taiwan High Court, Intel persistently filed another appeal to the Supreme Court. In April 2008, the Supreme Court ordered the Taiwan High Court to reexamine the case as the following two conditions should be met in order to conclude trademark infringement,

1. A trademark that is identical or similar to another entity/person’s well-known trademark, and hence is likely to dilute the distinctiveness or reputation of the said well-known trademark;
2. A company that is registered based on another entity’s well-known Chinese trademark, and hence is likely to cause confusion to relevant consumers.

However, after the reexamination, the Taiwan High Court still upheld the decision made by the Banqiao District Court and rejected Intel’s appeal.

Organized and translated by Tony Chen

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