“CROWN” From Kaohsiung V.S. “CROWN” From Pingtong in Taiwan: The Pingtong District Court Ruled in Favor of “CROWN” From Pingtong.
2010/09/21 Taiwan“CROWN” originally from Kaohsiung, is a well-known brand of 24-hour coffee chain shops of 18 branches in Taiwan and now is struggling to overcome their lawsuit against another similar registered trademark to their name of “CROWN” from Pingtong, a city they did not have any stores, and yet, the both parties are using the similar signboards. The Pingtong District Court, however, ruled unfavorable against “CROWN” from Kaohsiung on grounds of that the extent of similarities between these two parties does not cause confusions to the consumers. Nevertheless, “CROWN” from Kaohsiung is determined to file appeals to overturn the lawsuit.
Signboard of CROWN From Kaohsiung Signboard of CROWN From Pingtong
Mr. Zheng as the trademark owner of “CROWN” from Kaohsiung first filed the trademark applications for “CROWN” in Chinese and “CROWN&FANCY” in English to the Intellectual Property Office in the Ministry of Economic Affairs during the years of 2002 and 2003. After obtaining the trademark registrations, Mr. Zheng initially started the chain-restaurants business together with his brother using the crown logo for the main marketing indicator, whereas now they only use the trademarks and logo for their business in chain coffee shops.
However, while Mr. Zheng had the exclusive trademark rights of “CROWN”, there were others using the similar trademark names as “CROWN” in Chinese and “CROWN&PT” in English in the same coffee chain-shops industry first in Pingtong since March 2004, which had later established four branches in Pingtong and Taichung. Mr. Zheng then brought this case to the Court as a lawsuit against Mr. Cheng, the owner of “CROWN” from Pingtong, on grounds of infringement. The Court thereafter requested the Intellectual Property Office to response regarding this case. Based on the administrative examination and the literally analysis without taking the account of the location and product names, the Intellectual Property Office stated that the similarities between these two trademarks might confuse the consumers. The Intellectual Property Office additionally suggested the Court to judge on the society customs and the owners’ marking habits in general cases. Afterwards, the Court agreed and prosecuted Mr. Cheng, the trademark owner of “CROWN” from Pingtong, on grounds of violating the trademark law.
On the contrary, Mr. Cheng argued that their rectangular shape of signboards of “CROWN&PT” is different from the other party and should not cause confusion to customers, even though he did not deny using a trademark similar to the other party’s without having any consent. Moreover, the Intellectual Property Office approved their trademark registration of “Pingtong Crown & Device” in October 2006.
According to the Court’s further examination on the distinctiveness of these two trademarks, the signboard of “CROWN” from Kaohsiung is illustrated with a fine design by using the large word “Crown” and the crown logo in silver or yellow embedded the eye-catching central part of store, whereas the rectangular signboard of “CROWN” from Pingtong leaves messy impression to customers. Therefore, the Court ruled a decision that the “CROWN” from Pingtong is not illegal since the trademark images of these two parties are distinguishable and shall not confuse the customers.
However, the “CROWN” from Kaohsiung does not accept the decision and is determined to take further actions against the “CROWN” from Pingtong, such as filing a civil lawsuit for compensation of the infringement.
By Akina Pan
International Affairs
