經通國際智慧產權事務所

On July 20, 2007, the Taipei High Court upheld the Taiwan Shihlin District Court’s decision of rejecting the trademark infringement complaint filed by Mr. Hsu (owner of Red Castle Tea Café in YuanLin, ZhangHua County) against Mr. Hong, the owner of Red Castle Café in Danshui, Taipei County (Case 96AC/No. 597, July 20, 2007).

In 2003, after finding out the café owned by Mr. Hong was named as Red Castle Café, Mr. Hsu filed a criminal lawsuit against Mr. Hong for infringing his trademark rights. However, based on the fact that the trademark “” (Red Castle Tea Café in Chinese & Device) owned by the claimant was published on Nov. 1, 2000, which was dated later than the date of the defendant started to use his café name on Feb. 3, 2000, the prosecutor made a ruling of not to prosecute.

Mr. Hong later filed a trademark application bearing “ ” (Red Castle 1899 & Chinese Characters) during the course of the investigation conducted by the prosecutor and was accepted for registration. When the trademark was published during the opposition period, Mr. Hsu filed an opposition against Mr. Hong’s published trademark. On July 21, 2004, the Taiwan Intellectual Property Office revoked Mr. Hong’s trademark right based on the confirmation of that Mr. Hong’s trademark was similar to Mr. Hsu’s registered mark.

As Mr. Hong continued to use his café name, Mr. Hsu further filed a criminal lawsuit to the Taiwan Shihlin District Court against Mr. Hong for breaching the Article 81(3) of Trademark Act by causing liklihood of confusion to relevant consumers. After the not-guilty verdict was announced, Mr. Hsu appealed the decision to the Taiwan High Court. The Taiwan High Court examined the case and provided the following statements,

1. In order to determine trademark infringement in this case, whether or not the defendant intentionally utilized the goodwill of the appellant’s trademark should also be considered so the right of first user and bona fide user of the appellant’s trademark was protected.
2. The “bona fide and fair use” of a similar trademark set forth in the Article 30(1) of Trademark Act was equvilent to “fairly and in good faith” set forth in U.S. laws but different from the definition of “unknown” set forth in civil laws. Therefore, the said “bona fide and fair use” was not required to be without fault.

The Taiwan High Court noted that the defendant continued to use the name of Red Castle Café after knowing the appellant’s trademark but ruled that the defendant was not guilty of trademark infringement based on the following reasons,

1. The defendant’s continuous use of the café name was based on the trust of the previous ruling of not to prosecute by the prosecutor.
2. The evidence of the Certificate of Corporation and business taxation receipts submitted by the defendant proved that the defendant started to use his café name before the the publication date of the appellant’s trademark. Thus, the defendant’s use of the disputed café name did not intend to utilize the goodwill of the trademark registered by the appellant.
3. The defendant used “red castle” to name his café because of the exterior appearance of the café and the related historical backgrounds. In addition, the obvious conflict of markets between the two cafés owned by the appellant and the defendant did not exist due to geographic distance.

The Court also noted that no further appeal would be allowed.
 

Organized and translated by Jenny Yu

International Affairs