Yuki Chiang
The Intellectual Property Court rendered the 108-Min-Shang-Su-61 Decision of April 28, 2020 (hereinafter, the “Decision”), holding that although a trademark holder asserting that the trademark is a well-known mark, still the trademark shall not be regarded as a well-known mark if evidence supporting the advertising and sales volume relating to the trademark is not produced.
According to the facts underlying this Decision, the Plaintiff asserts that it has engaged in apparel sales business for many years, and after approved by the Taiwan Intellectual Property Office, it had used trademark “OO DinoSour” on products and as a brand name, which depicts a cartoon Tyrannosaurus rex walking with a dog on a leash (hereinafter, the “Trademark”). The Plaintiff asserted that since its annual turnover in excess of NT$10 million is sufficient to prove that it enjoys stable sales of apparel printed with the Trademark year by year and has a certain degree of fame in the domestic consumption market, the trademark is a well-known mark. Having sold apparel for many years, the Defendant should be aware that when conducting business operation, it should verify the sources of the apparel it has purchased to ascertain whether the Trademark is infringed. Therefore, since the Defendant posted an advertisement for apparel bearing the Trademark such as round collar and short-sleeved T-shirts with a sampled cartoon Tyrannosaurus rex, the Defendant breached its duty of caution and infringed the Trademark. The Plaintiff claimed joint and several damages from the Defendant and its legal representative in an amount calculated by the average retail unit price of the Goods multiplied by 1,500 times.
According to the Decision, the term “well-known” in the Trademark Act means that there is objective evidence sufficient to conclude that the trademark has been generally recognized by relevant businesses or consumers in accordance with Article 31 of the Enforcement Rules of the Trademark Act. To determine if a registered trademark or company name is generally recognized by relevant businesses or consumers, matters such as the goods, services or business operations that use the trademark or company name, the marketing period, advertising volume and sales volume in the market, market share, registration timing of the trademark or company name, distinctiveness, value, extent of media coverage, impression of the consumers, etc., may be considered for reference, and market survey materials may be used as reference in order to make a general determination. Even though the trademark or company name is special, and has been covered several times or has received several awards, this does not necessarily achieve the effect of general recognition by the consumers.
Further, the Court points out although the Plaintiff claimed that the Trademark is a well-known mark, still it failed to produce any evidence to substantiate the claim, for instance, survey report on the advertising or sales volume, market share or the market value of the Trademark appraised by a third-party impartial professional institution or any market research materials provided by a third-party impartial professional institution by meticulous means. Moreover, other than, the store materials so produced were not notarized by a notary public and the timing was not clear, most of them failed to completely specify the main portion “DinoSaur” of the Trademark. In addition, except for a few pictures of the goods, the complete Trademark, which included the main portion “DinoSaur”, was not appeared on the advertisement at all. Based on the above reasons, the Court ruled that the Plaintiff failed to proof the Trademark is a well-known mark.