Kouben Pharmaceutical Ind. Co., Ltd. was complained for counterfeiting another's symbol in violation of Fair Trade Law Article 20(1)(i)
Case:
Kouben Pharmaceutical Ind. Co., Ltd. was complained for counterfeiting another's symbol in violation of Fair Trade Law Article 20(1)(i)
Key Words:
counterfeiting, symbol (trade dress), similar or identical use, confusion or misidentification
Reference:
Fair Trade Commission Decision of August 9, 2001 (the 509th Commissioners' Meeting); Disposition (90) Kung Ch'u Tzu No. 102
Industry:
Pharmaceuticals Manufacturing (1822)
Relevant Law:
Article 20 of the Fair Trade Law
Summary:
1. The complainant in this case, Paolyta Co., Ltd., produces the Man Niu (Wild Bull) vitamin B drink; the trademark "Wild Bull" is a symbol generally recognized by relevant enterprises and consumers. The product manufactured by the respondent, Kouben Pharmaceutical Ind. Co., Ltd., is a vitamin B drink called Chiang Niu (Strong Bull), with a label similar to that of the complainant's Wild Bull. The label of the complainant's Wild Bull features a black background with a decorative band in red along the bottom; the Chinese character "man" is painstakingly designed to look like the head of a bull, while the gold lines of the "niu" character are extended on the right hand side to look like a bull's tail. The respondent's Strong Bull label also uses a black background with a red band along the bottom. The design of the characters "chiang" and "niu" is handled in such a way that the right-hand portion of the "chiang" character looks like the head of a bull, while the left hand side is reduced and set to one side; while the "niu" character is also in gold, and extended on the right-hand side to look like a bull's tail. Thus observing the overall appearance of the two marks shows that while there are small differences in some areas of the graphics, the designs are crafted in an identical manner. The two products also use containers of brown glass with similar proportions and a similar overall appearance, while the printing of the bottle cap in both cases features a black circle around the periphery; consumers making a hurried choice would be very likely to mistakenly pick the wrong bottle. Thus the respondent's conduct was a possible violation of Article 20(1)(i) of the Fair Trade Law.2. The Fair Trade Commission's investigation found that after the complainant's Wild Bull product was put on the market, it had been advertised in both print and broadcast media, and most often in prime time. It was heavily advertised in both broadcast and graphic media, with large advertising signs and flyers, and with discount promotions at large retail outlets and department stores, so that the "Wild Bull and device" emblem became a symbol widely recognized among the relevant enterprises and consumers. Further, the respondent's "Strong Bull" and, the complainant's product, are both vitamin B drinks. In July of 1999, the respondent engaged Hopchins Industrial Co., Ltd., located in Kuan Tien Town in Tainan County, to manufacture the drink on its behalf, and began marketing the product in August of the same year. The respondent also made vigorous efforts to gain approval for trademark registration of the "Kuo Ben Chiang Niu 180" mark by the Ministry of Economic Affairs' Intellectual Property Office, but due to the provisions of Article 37(1)(xii) of the Trademark Law, which states that "designs identical or similar to registered trademarks of another person for the same or similar goods [may not be registered]," the application was rejected by the Intellectual Property Office and is on file as such.3. The Fair Trade Commission held that the complainant's "Wild Bull and device" trademark is designed around the theme of a bull, with the "man" character shaped like the head of a bull, and the "niu" character shaped like a bull's tail, while the Kuo Ben Chiang Niu vitamin B drink from the Kouben Pharmaceutical Ind. Co., Ltd. also uses a "Kuo Ben Chiang Niu 180" mark designed around the theme of a bull-the left part of the "chiang" character is shaped like a bul's head, and the "niu" character is shaped like a bull's tail. The respondent protested vigorously that there were differences in it's bull's head, styled out of the "chiang" character, and that of the compainant, styled out of the "man" character, with the horns of the complainant's curving to the outside, and the horns of the respondent's curved to the inside, while the bulls' tails also pointed in different directions. In overall appearance, however, both designs were similar, employing artistically designed characters in gold with red borders on a black background. Despite the differences in the directions of the horns and tails, the designs and compositions were similar, and observation at different times and places would cause them to be mistakenly perceived as the same product; the respondent's conduct was therefore deemed a violation of Article 20(1)(i) of the Fair Trade Law. A disposition was issued pursuant to Article 41 of the same law, ordering Kouben Pharmaceutical Ind. Co., Ltd. to immediately cease its unlawful conduct, and imposing an administrative fine against it of NT$300,000.Appendix:Kouben Pharmaceutical Ind. Co., Ltd.'s Uniform Invoice Number: 65486603Summarized by Tu, Hsing-Feng; Supervised by Yeh, Tien-Fu