Criminal judgment regarding violations of the Trademark
Law and Fair Trade Law by Chan Yu-chen
Chinese Taipei
Case:
Criminal judgment regarding violations of the Trademark Law
and Fair Trade Law by Chan Yu-chen
Key Words:
Gucci, Chanel, counterfeit, constructive joinder of
offenses
Reference:
Taipei District Court Criminal Judgment (87) Yi Tzu No.
2894
Industry:
Retail Sales of Leather Briefcases, Handbags, and Suitcases
(5344)
Relevant Laws:
Articles 20,
35 of the Fair Trade
Law
Summary:
-
The facts: Chan Yu-chen was clearly aware that the brands
Gucci and Chanel belong to the Italian company Gucci and the Swiss company
Chanel, respectively, and that the rights of exclusive use of trademark with
respect to those brands had been registered by the National Bureau of
Standards(currently the Intellectual Property Office) of Ministry of
Economic Affairs. Nevertheless, out of a general criminal intent, he
repeatedly sold counterfeit leather briefcases, wallets, and other articles
bearing the aforementioned trademarks to various customers at the Yi Li Sha
Women's Boutique on Renai Rd. Section 4 in the Ta-an District of Taipei
City, at prices unlikely to be confused with the prices of genuine goods,
beginning in May 1998 and continuing until June 5, 1998 at 6:00 PM. When
Chan Yu-chen was apprehended by the police, counterfeit goods in Chan Yu-chen's
possession bearing the Gucci and Chanel trademarks were confiscated, along
with 120 sample photographs of counterfeit goods he sold bearing those same
trademarks.
- The actions of the defendant, Chan Yu-chen constitute offenses under
Article 63 of the Trademark Law as well as Articles 20(1)(i) and 35 of the
Fair Trade Law (FTL).Although the prosecutor maintained that, because the
defendant sold goods bearing counterfeit trademarks at prices obviously
lower than genuine goods, most consumers would not confuse them with goods
from the aforementioned firms that had obtained the rights of exclusive use
of trademark; and that the defendant's actions did not constitute a criminal
violation of the FTL,the arguments are not accepted by this court. Articles
62 and 63 of the Trademark Law differ from Articles 20 and 35 of the FTL in
constitutive requisites and regulatory scope. The former provides the right
of exclusive use and protection only for registered trademarks. The latter,
however, extends its protection to trademark, product's container,
packaging, and external appearance, while requiring that the trademark in
question be "commonly known to the relevant public"; their scope
is thus rather broad, and may sometimes cover trademark counterfeiting.
Therefore, it is generally correct to punish the sale of products bearing
counterfeit registered trademarks under Article 63 of the Trademark Law.
However, when it can be further proved that the trademark is "commonly
known to the relevant public" and its use could "cause confusion
with the goods of another person" will the latter part of Article
20(1)(i) of the FTL apply; and as a result, it constitutes an offense under
Article 35 of that same law.
Furthermore, only when two criminal offenses in which their constitutive
requisites are the same are committed by a single act will the issue of
concurrence of laws emerge. Trademark counterfeiting is basically considered
a form of unfair trade; it frequently violates Article 20 of the FTL at the
same time. But since the relevant provisions of the Trademark Law and FTL
differ in their respective constitutive requisites and scope of application,
there will be no issue of concurrence of laws. It is undisputed that
“Gucci” and “Chanel” are trademarks that are famous and
"commonly known to the relevant public". By knowingly selling
counterfeit goods, the defendant has violated both the latter part of
Article 20(1)(i) and Article 35 of the FTL, as well as Article 63 of the
Trademark Law, and should be treated as a constructive joinder of offenses.
The establishment of these offenses should not be affected by either the
locale where the sales occurred or the price levels consumers are charged.
Otherwise, the laws protecting trademarks and fair trade would be reduced to
mere formalities. Moreover, to assert that since the defendant's sale
location and pricing would prevent confusion with the genuine products,
therefore, no fraud has been committed, would be in conflict with the
reasoning supporting the punishment of the defendant under Article 63 of the
Trademark Law. This is the gist of the Supreme Court Judgment (86) T'ai Fei
Tzu No. 241. The prosecutor's aforementioned argument was thus a
misunderstanding of law. The defendant's commission, by a single act, of the
two above offenses under the FTL and the Trademark Law has qualified him as
a constructive joinder of offenses, which, as stipulated in Article 55 of
the Penal Code, should be punished by the more severer of the prescribed
punishments, i.e. that in Article 35 of the FTL. After purchasing the goods,
the defendant on numerous occasions repeatedly sold them out within a
consecutive period of time. Such repetition of like offenses based on a
general criminal intent should be treated as a consecutive offender and the
punishment be increased according to the provision in the Criminal Code.
Summarized by Ch'iu, Shu-fen
Supervised by Hsu, Chao-ying
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