Criminal judgment against the Tsuo Tan Nu ["Giordano"] eyeglass company for violating the Fair Trade Law
Chinese Taipei
Case:
Criminal judgment against the Tsuo Tan Nu ["Giordano"] eyeglass company for violating the Fair Trade Law
Key Words:
specific part of a trademark; to use in a similar manner; to cause confusion
Reference:
Tainan District Court of Criminal Judgment (88) Yi Tzu No. 1711
Industry:
Eyeglass and Lens Industry (3314)
Relevant Laws:
Summary:
Walton International Limited applied for registration on June 11, 1994 for its service mark "Tsuo Tan Nu" [a Chinese transliteration of "Giordano"], which is commonly known to relevant enterprises and consumers. The registration was approved on June 16, 1995. Despite being aware of the above, Ts'ai Yan-yi, the responsible person of the Tsuo Tan Nu eyeglass company located in Tainan City, used the aforesaid "Tsuo Tan Nu" trademark design registered by Walton International Limited as a specific portion of [the name of] his new company, and applied for registration of incorporation with the Ministry of Economic Affairs on September 14, 1994. The application was subsequently approved. [Ts'ai's] company engaged in the manufacturing, processing, and trade of various types of lenses, eyeglasses frames, reading glasses, and their components. These circumstances were likely to cause other persons to believe that a relationship, such as of licensing or affiliation, existed between the two companies.
During the investigation, the defendant Ts'ai admitted its using the name "Tsuo Tan Nu" to incorporate the Tsuo Tan Nu eyeglass company, but denied the above unlawful acts. Ts'ai claimed that the "Tsuo Tan Nu" trademark owned by Walton International Limited was only designated for use on apparel, watches, and leather products; it was not designated for use on eyeglass products and the trademark was not used in the same or similar manner. The investigation showed, however, that the service mark "Tsuo Tan Nu" registered by Walton International Limited was designated for use on products including watches and apparel, and was commonly known to the relevant public in Chinese Taipei. Moreover, most eyeglass companies in Chinese Taipei also sell watches and clocks. By using the name "Tsuo Tan Nu" for his eyeglass company, the defendant misled the public to believe that his company was a franchise or an affiliate of the complainant, Walton International Limited. Thus, the defendant not only maliciously used the complainant's trademark, but also thereby engaged in unfair competition against the complainant. Thus the claim of not having violated the Fair Trade Law ("the Law") lacked credibility.
The defendant violated Article 20(1)(ii) of the pre-amended Law, which stipulated that with respect to the provision of services, an enterprise shall not use in the same or similar manner another person's company trademark commonly know to the relevant public so as to cause confusion. The accused party thus committed the offense in Article 35 of the pre-amended Law.
After the incident, an amendment to the Law was announced on February 3, 1999, and took effect on February 5, 1999. In the amended Law, the fine imposed in Article 35 is increased to not more than NT$100 million, which is higher than the fine provided prior to the amendment, and thus disadvantageous to the defendant. In accordance with the proviso of Article 2(1) of the Criminal Code, the act should be punished pursuant to Article 35 of the pre-amended Law. Although the amended Article 35(1) of the Law adopts the principle of "administrative measures before judicial ones," this merely means that corrective measures should be taken prior to imposition of punishments. It does not lift the criminality of the original offense, which falls outside of the scope of the amendment. In accordance with the principle of non-retroactivity of the law, the newly added administrative correction actions should not apply to violations committed before the amendment took effect, nor should they be taken as grounds for exempting such violations from criminal punishment. Thus the constitutive requisites and statutory punishments of Article 35 of the pre-amendment Law remain applicable to this case.
Since the defendant Ts'ai Yan-yi was the responsible person of the Tsuo Tan Nu eyeglass company and violated Article 35(1)(ii) of the pre-amended Law, the Tsuo Tan Nu eyeglass company should likewise be punished pursuant to Article 35 of the pre-amended Law.
Summarized by Ch'iu
Hsu-fen
Supervised by Hsu Chao-ying