The gist of presumed trademark infringement under Article 70, Subparagraph 2 of the Trademark Law should not be limited to infringement patterns where two trademarks are completely “identical”(Taiwan)

Jane Tsai

According to the 104-Min-Shang-Shang-22 Civil Decision of November 17, 2016 rendered by the Intellectual Property Court, the Appellant used “____” [phonetically spelled as “Fu Lan De Lin”] as the specially selected portion of its company name. Although the it was not completely identical to the famous mark “____” [meaning “Franklin” and phonetically spelled as “Fu Lan Ke Lin”], still this would constitute the use of words contained in a famous mark as the Appellant’s company name and reflect the gist of the trademark infringement presumed under Article 70, Subparagraph 2 of the Trademark Law.

The Appellant contended that according to the Article-by-Article Interpretation of the Trademark Law released by the Intellectual Property Office, “knowingly using words contained in another personÕs well-known registered trademark as the name of a company, business, group or domain or any other name that identifies a business entity” under Article 70, Subparagraph 2 of the Trademark Law means the use of words “identical” to those contained in a famous mark to an extent sufficient to attract consumers’ attention and differentiate from the goods or services of others. In reference to the use of “identical or similar” trademarks in Subparagraph 1, since this subparagraph contains provisions concerning presumed infringement, it is inappropriate to expand the scope of “words” contained in a famous mark by way of interpretation to include “similar” words for the sake of determination.

Therefore, the Intellectual Property Court pointed out that “____” (“Fu Lan De Lin”) is very similar or even substantively identical to “____” (“Fu Lin Ke Lin”) in composition for the following reasons:
1. In this case, neither Fu Lan De Lin nor Fu Lan Ke Lin is an existing Chinese term. Although “De” is different from “Ke” when the two sets of words are observed, still the ending sound of both “De” and “Ke” is both “e” with remaining three identical characters “Fu,” “Lan,” and “Lin.” Therefore, Fu Lan De Lin or Fu Lan Ke Lin would cause relevant consumers to perceive that their difference only lies in their phonetical spelling and these two sets of words are associated with substantively identical major concepts.
2. In addition, judging from their appearances, both Fu Lan De Lin and Fu Lan Ke Kin are combinations of four simple Chinese characters with three identical characters out of the four and only differ in the third character. They also are highly similar or even substantively identical in the compositions of characters. According to the reading habits of ordinary people, the characters in the middle are habitually overlooked with special attention paid to the beginning and end in the sets of characters. From the angle of pronunciation, Fu Lan De Lin only differs from Fu Lan Ke Lin in the third character. If the pronunciation of the third character is not deliberately emphasized, or if special attention is not paid when it is pronounced, the differences between Fu Lan De Lin and Fu Lan Ke Lin cannot be detected with ease. When they are pronounced, they are very likely to cause the listeners to perceive them as identical sets of characters. Therefore, the differences between De and Ke are meaningless.
Finally, from a conceptual perspective, the composition of Fu Lan Ke Lin does not have any inherent meaning in Chinese and is thus unique and distinctive. Fu Lan De Lin does not have any inherent meaning in Chinese. For people in Taiwan who speak Chinese, Fu Lan Ke Lin, the trademark at issue, and the Fu Lan De Lin trademark or company name leave the general impression that they are translated from the same words.