Taiwan Tanabe Food Co. allegedly used another person's well-known symbols commonly known to relevant enterprises and consumers as its company name in violation of Articles 20 and 24 of the Fair Trade Law
Case:
Taiwan Tanabe Food Co. allegedly used another person's well-known symbols commonly known to relevant enterprises and consumers as its company name in violation of Articles 20 and 24 of the Fair Trade Law
Key Words:
trademark, company name, pass off
Reference:
Fair Trade Commission Decision of August 2, 2001 (the 508th Commissioners' Meeting); Disposition (90) Kung Ch'u Tzu No. 105
Industry:
Other Unclassified Food Manufacturing Industry (0899)
Relevant Law:
Article 24 of the Fair Trade Law
Summary:
1. A complaint was filed by Tanabe Pharmaceuticals, Japan and Tanabe Pharmaceuticals, Taiwan as follows: The complainants' registered marks including a "five-wheel design," "Tanabe," and "Tanabe Taiwan" have long been well-known symbols. The respondent must have known that the above-mentioned trademarks were world-famous symbols when it was incorporated in 1994. However, without the prior consent or authorization of the complainants, the respondent used on its product packages a "four-wheel symbol" similar to the complainants' five-wheel trademark and a name that is a specific part of the complainants' registered company names. On the back of the packages is printed "TANABE," the Japanese transliteration of the company name, instead of the commonly used Mandarin transliteration "T'ien Pien." Furthermore, the colors and design of the four-wheel symbol used on the respondent's name cards are also similar to those of the complainants. Its company name is a blatant imitation of Tanabe Taiwan. By these usages, the respondent has misled consumers into believing its products are manufactured by the complainants or an affiliate of the complainants authorized to manufacture and sell the goods, and taken advantage of the complainants' strong commercial reputation for its own unlawful profit. This free-riding on the complainants' business reputation exploits the fruits of the complainants' own diligent efforts. Furthermore, consumers are likely to be confuses on the sources of the goods. Therefore, the respondent is clearly in violation of Articles 20(1) and 24 of the Fair Trade Law (FTL). 2. The respondent argued as follows: (1) The respondent was incorporated on 23 December 1994. It applied for registration of the following business operations: "manufacturing, purchase and sale, and import and export of food and beverages; processing, purchase and sale, import and export of farm and fishery products; purchase and sale agency and import and export business of food and beverage raw materials and manufacturing equipment; purchase and sales agency and import and export business of daily commodities and gifts; general import and exporting business." The major category of products manufactured or sold by the respondent is "food or its raw materials," in contrast with the complainants' "pharmaceuticals." The motives and needs that prompt consumers to purchase goods in these two categories are distinct. Although the respondent used "Tanabe" as a specific portion of its company name in the same manner as the complainants, consumers will not be confused on the sources of the products, since the respondent labels its product packages "Taiwan Tanabe Food Co." Thus it is not in violation of Article 20(1) of the FTL. (2) The respondent's "four-wheel symbol" is similar to the complainants' "four-wheel symbol" trademark and the use of the "four-wheel symbol" is deemed a same or similar use of the complainants' symbol. However, the "four-wheel" trademark was cancelled by the Intellectual Property Office of the Ministry of Economics Affairs in 1996. At present, there is no concrete evidence to show that the respondent has continued to use the similar trademark. Therefore, the respondent cannot be proven to have engaged in the same or similar use of another person's symbol commonly known to relevant enterprises or consumers, such as would confuse consumers as to the source of goods. 3. The Fair Trade Commission found as follows: (1) "Taiwan Tanabe" and the "five-wheel symbol" are symbols commonly known to relevant enterprises and consumers. A specific portion of the respondent's Chinese company name is "Taiwan T'ien Pien Shih P'in" (a Mandarin transliteration of "Taiwan Tanabe Food"), while its adopted English name is actually the Japanese pronunciation of its Chinese name. In Chinese Taipei only the complainants and the respondent use the Chinese characters "Taiwan T'ien Pien" (in transliteration) as part of their company names. With that in mind, the respondent discarded the Chinese characters' Mandarin transliteration "T'ien Pien" for the Japanese pronunciation "Tanabe" used by the complainants. The respondent intentionally imitates the complainants' well-known symbols and free-rides on their business reputation for unlawful commercial gains. The above facts are sufficient to render the respondent's conduct illegal. (2) The respondent applied for the use of the "Tanabe & TTF Design" (i.e. the "four-wheel symbol") trademark that is similar to the "five-wheel symbol" of the complainants in 1995 and the trademark was designated to be used on beverages such as beers, carbonated soft drinks, and juice. This conduct was also an attempt to pass off on other enterprises' well-known symbols and to mislead consumers into believing it to be an affiliate of or authorized by the complainants. The respondent argued that it already ceased its use of the "Tanabe and TTF figure" after the Intellectual Property Office cancelled the trademark on account of its similarity to the complainants' "five-wheel" trademark; furthermore it had applied for other trademarks to be used on its products. However, the respondent not only continued to use the Chinese characters "Taiwan Tien Pien Shih P'in" and the words "Taiwan Tanabe" as parts of its respective Chinese and English company names, but also printed the Chinese characters "T'ien Pien Sheng P'in" ("heavenly delicacies by Tanabe" in Chinese) on its product packages. Its conduct when seen in its entirety is an active attempt to free-ride on the complainants' business reputation and an obviously unfair act disrupting the trading order. The conduct was found by the Commission to be in violation of Article 24 of the FTL. (3) After considering the respondent's motive and purpose, its anticipated unlawful gains, the extent and duration of the damage done to trading order, the profits gained, the size of its enterprise, its market position, its criminal record, and its attitude subsequent to the offense, the Fair Trade Commission ordered the respondent to cease the practices mentioned in the previous paragraph and fined it NT$300,000 pursuant to the forepart of Article 41 of the FTL. Appendix: Taiwan Tanabe Food, Co.'s Uniform Invoice Number: 89997387 Summarized by Tu, Hsing-Feng; Supervised by Yeh, Tien-Fu