Oli Wong
The Supreme Court rendered the 108-Tai-Shang-1878-Zi Decision of December 19, 2019 (hereinafter, the “Decision”), holding that if the names, trade names or company names of others are not generally known to relevant enterprises or consumers, the use of such identical or similar name can hardly be found to constitute unfair competition.
According to the facts underlying this Decision, the Appellant established OO Enterprise Ltd., whose name was approved by the competent authority, on March 29, 2010, while the Appellee registered the name of OO Food Ltd. for its establishment on June 23, 2011. The Appellant asserted that the specially selected portion of the Appellee’s company name, which is “OO,” the registered business items and products actually sold were all identical to the Appellant’s. The Appellee’s use of the specially selected portion of the name, which is “OO,” for advertising and marketing is objectively sufficient to cause confusions and misidentifications and violate the Appellant’s name right. The Appellee’s business operation using the name “OO Food Ltd.” in public is sufficient to undermine trading order and constitutes unfair competition in violation of Article 20, Paragraph 1, Subparagraphs 1 and 2 and Article 24 of the Fair Trade Law before amendment. Therefore, a complaint was filed to compel the Appellee not to use “OO Food Ltd.” as its company name in accordance with Article 19 of the Civil Code and Article 30 of the Fair Trade Law.
For starter, according to the findings in the second-instance decision, the type of business is “food” as indicated in the Appellee’s company name. Since it is clearly indicated in a text that a different type of business is involved, the two should be deemed different company names. The name of the Appellant’s company is different from that of the Appellee’s. It should not be difficult for ordinary people use ordinary caution to tell that the two are two different entities. Therefore, it is difficult to conclude that the name used by the Appellee leads to confusions and misidentifications concerning the rights and obligations between the two, and the Appellant’s request that the Appellee should not use its company name in accordance with Article 19 of the Civil Code is unacceptable. In addition, the principal places of business, business locations and types of business of the two are all different, not to mention that ordinary consumers should not be confused or misled into misidentifications according to the catalogues of products produced by both parties for sale. In the end, since the Appellant never used the specially selected portion “OO” for product advertising or on product packages, confusion with the Appellee in the market is unlikely. The original trial court reversed the first-instance decision, which found in favor of the Appellant on the ground that the Appellant had failed to substantiate the Appellee’s violation of the Fair Trade Law, and rendered a decision to dismiss the Appellant’s first-instance complaint. Dissatisfied, the Appellant appealed.
According to the Decision, the restrictions on an enterprise’s use for its goods or services provided as part of its business operation of names identical to the names, trade names or company names of others under Article 20, Paragraphs 1 and 2 of the Fair Trade Law are applicable only when the names, trade names or company names of others are generally known to relevant enterprises or consumers. Therefore, if the names, trade names or company names of others are not generally known to relevant enterprises or consumers, it is still difficult to directly conclude that the use of identical or similar names or designations would certainly constitute unfair competition.
It was further pointed out in this Decision that upon incorporation registration by the Appellee, the specially selected portion of the name “OO” was followed by “Food,” which is sufficient to differentiate the business type, not to mention that the specially selected portion of the name “OO” had long been registered and used by a third party which is “OO Industry Ltd.” before it was used for company registration by both parties. In addition, “OO” was also used by “OO Ltd.” (a Hong Kong company) for its trademark registration in Taiwan. This further proves that the Appellant is not generally known to general consumers. Moreover, the Appellant licenses third parties to manufacture and sell food products and does not use the specially selected portion of the name which is “OO” to manufacture or sell products. Therefore, the Appellee’s use for its company name should not cause confusions or misidentifications with the representation of Appellant’s products or services in the market, does not constitute unfair competition or undermine trading order and does not meet the circumstances under Article 20, Paragraph 1, Subparagraphs 1 and 2 and Article 24 of the Fair Trade Law and Article 19 of the Civil Code. Therefore, the Appellant’s request to prohibit the Appellee from using its name should not be granted. Believing that the appeal was groundless, the Supreme Court rejected the appeal.