2016.08.11
Jane Tsai
The Intellectual Property Court pointed out in its 105-Hang-Shang-Su-31 Administrative Decision of August 11, 2016 (hereinafter, the “Decision”) that whether a mark is a famous mark should be determined based on the general perception of relevant enterprises or consumers within the territories of the Republic of China.
The Plaintiff in this case asserted that it had begun to sell the “SAMYANG” ramen it first created in Korea in 1963 and applied to register the “__and device SAMYANG” trademark (hereinafter, the “Basis Trademark for Invalidation”) for use in goods such as instant noodles, noodles, cakes and chocolates in Taiwan in 1987 and 1988. The Intervenor had purchased and imported to Taiwan instant noodle products bearing the foreign language “SAMYANG” mark from the Plaintiff as early as January 17, 2001. The Plaintiff also agreed with the Intervenor on March 4 of the same year that the Intervenor would be the exclusive agent for the SAMYANG brand in Taiwan. The Intervenor applied to register the trademark at issue, the “__SAMYANG FOODS and device” trademark, on October 23 of the same year for the same or similar goods, and the application was approved. Because the trademark at issue has been registered for five years, the Plaintiff asserted that the registration of the trademark at issue maliciously violated the protection of famous marks under Article 30, Paragraph 1, Subparagraph 11 of the current Trademark Law. Therefore, the Plaintiff applied to invalidate the registration of the trademark at issue.
According to the Decision, whether the Basis Trademark for Invalidation is a “famous mark” should be determined based on whether it is extensively known to the relevant enterprises or consumers within the territories of the Republic of China.
According to the Decision, the reports in commercial magazines in Korea as submitted by the Plaintiff were published later than the application date of the trademark at issue and were published in Korean with their Chinese translation version prepared in simplified Chinese. Neither language targets consumers in Taiwan as their main readers. Therefore, it can hardly be concluded that consumers in Taiwan were able to learn about such reports. As for the information in the foreign language webpages produced by the Plaintiff, since the timing, circumstances and territories of their use are unknown, there is no way to substantiate if the Basis Trademark for Invalidation is familiar to relevant consumers in Taiwan. Therefore, the Decision held that since the evidence produced by the Plaintiff could hardly prove that the Basis Trademark for Invalidation reached the “extent of a famous mark” under the Trademark Law, the Plaintiff could not assert famous mark protection. The Plaintiff’s complaint was thus dismissed.