A complaint alleging I-Siang Beverage Mfg. Co., Ltd. counterfeited the packaging appearance of Mr. Brown Coffee in violation of the Fair Trade Law
Case:
A complaint alleging I-Siang Beverage Mfg. Co., Ltd. counterfeited the packaging appearance of Mr. Brown Coffee in violation of the Fair Trade Law
Key Words:
King Car, Mr. Brown, I-Siang, I-Lang, outer packaging
Reference:
Fair Trade Commission Decision of July 12, 2000 (the 453rd Commissioners' Meeting); Letters (89) Kung Ts'an Tzu No. 8808962-006, Disposition (89) Kung Ch'u Tzu No. 122
Industry:
Non-alcoholic Beverage Production Industry (1183)
Relevant Laws:
Article 20(1)(i) of the Fair Trade Law
Summary:
1. In a complaint filed by King Car Food Industrial Co., Ltd. (King Car), King Car alleged that the Mr. Brown Coffee product, which was first produced by King Car in May 1982, had always been the top choice in its class and was extremely popular among consumers. The product's design was richly imbued with a foreign flavor - the "Mr. Brown" cartoon character holding a coffee in one hand and giving a "thumbs-up" sign with the other, and had been registered in 1983 with the MOEA's National Bureau of Standards (NBS) (now the Intellectual Property Office ) as a trademark covering the "MR. BROWN and Design" for use with mixed beverages including teas, coffees, and colas. The I-Lang Coffee product produced by I-Siang Beverage Mfg. Co., Ltd. (I-Siang) used the same easy-opening can and its design imitated that of the Mr. Brown coffee product in size, shape (short and squat), depth of color, and layout of lettering. All of these design features (the cartoon character was wearing a hat, holding a coffee in one hand, was bracketed in yellow) imitated those of the Mr. Brown product and had constituted a violation of the Fair Trade Law. 2. Although the background color for Mr. Brown Coffee was brown - the vary color of the coffee beverage itself, yet according to Article 5 of the Trademark Law, an approved registered trademark must enable an ordinary purchaser of goods to recognize such [words, pictures, symbols, combination of colors, or combination thereof] as a mark representing the goods, and must enable the goods to be distinguished from those of another; or it must have become a distinctive symbol of the applicant's products with respect to trading (i.e., it must possess either distinctiveness or secondary meaning). As the overall appearance of Mr Brown Coffee including its lettering and design has been registered as a trademark with the NBS in 1983, according to the Article 5 of Trademark Law, the design must have possessed the prescribed distinctiveness or secondary meaning. The primary distinguishing features of Mr. Brown Coffee were its easy-opening can and its "MR. BROWN and Design" trademark encircling the can. Given that the design possessed distinctiveness or secondary meaning, when compared in terms of its overall appearance, Mr. Brown Coffee had constituted a "symbol" specified in article 20(1)(i) of the Fair Trade Law. Mr. Brown Coffee was first produced domestically in May 1982 (nearly 20 years ago). The product had been sold in large quantities through the promotion by television and media advertisements for quite a long time. Taking into consideration of the length of time that Mr. Brown Coffee had been promoted and advertised, its sales volume, the image created among relevant enterprises or consumers due to its extensive media exposure, Mr. Brown Coffee had been a symbol universally known to relevant enterprises or consumers. 3. The overall appearance of the I-Lang product consisted of a cartoon character with a beard, wearing a hat and tie, holding a cup, facing right, and standing in an archway. Those features were similar to the design of the Mr. Brown product, and were used on a 250-milliliter can as was the design of Mr. Brown Coffee. On the upper two-thirds part of the can, the color brown faded to a background color. The cartoon character was featured on the can's front and back against a light yellow background; and below, the product's name was featured in English in brown. On its lower one-third part, over an earth-yellow background, the product's name was featured in Chinese on the front and the word "COFFEE" was featured on the back. The fonts used were similar too, and they were also set against a white background. The two products were extremely similar in terms of their appearances. Based on the observations of consumers exerting average levels of attention, there were no obvious differences between these products. Observations of the two products at different time and locations or comparisons of them in terms of their main parts also indicated that I-Siang had evidently used the symbol of King Car's Mr. Brown Coffee on its own product in the same or similar manner as it was used on Mr. Brown Coffee. In addition, the main purchasers for this type of product are consumers who generally exercise only limited levels of attention when making a purchase. Given that the product is not a highly priced good, consumers are less likely to use the same levels of attention when making a purchase as those when the purchased goods are highly priced. It is very likely that they would make a purchase as a result of a momentary misidentification when the purchase was made in hastiness. The Commission found that the use by I-Siang of the appearance of King Car's well-known Mr. Brown Coffee in the same or similar manner was sufficient to cause confusion with respect to King Car's Mr. Brown Coffee, in violation of article 20(1 )(i) of the Fair Trade Law. Appendix: I-Siang Beverage Mfg. Co., Ltd.'s Uniform Invoice Number: 66661749 Summarized by Lai, Mei-hua; Supervised by Wu, Jack T. H.