Consmat Enterprise Co., Ltd. was accused of plagiarizing the well-known trade dress of another enterprise on its "Chien Chuan Special Grade Erguotou" liquor in violation of Article 24 of the Fair Trade Law
Case:
Consmat Enterprise Co., Ltd. was accused of plagiarizing the well-known trade dress of another enterprise on its "Chien Chuan Special Grade Erguotou" liquor in violation of Article 24 of the Fair Trade Law
Key Words:
Chien Chuan Special Grade Erguotou, imitate, symbol (trade dress)
Reference:
Fair Trade Commission Decision of March 7, 2002 (the 539th Commissioners' Meeting); Letter (91) Kung San Tzu No. 0910002145
Industry:
Tobacco Products and Alcoholic Beverages (4423)
Relevant Law:
Article 24 of the Fair Trade Law
Summary:
1. The "twin dragons design" product label used by Kinmen Liquor Factory Industry Co., Ltd. (the complainant) on its "Special Grade Kaoliang Liquor" product constitutes "a symbol commonly known to relevant enterprises or consumers" under Article 20(1)(i) of the Fair Trade Law. " Further, the gold label "Kinmen 38° Special Grade Kaoliang Liquor" produced by the complainant and its attendant "Kin 38° Men" and "Kinmen 38° Proof" trademarks which the complainant has applied to register have all been approved by the Intellectual Property Office (IPO) of the Ministry of Economic Affairs. Aside from minor differences in the coloring of the "twin dragons design" and the written text "38°" and "Special Grade Kaoliang Liquor," the "twin dragons" design has been consistently used in association with Kinmen Kaoliang liquors and can be deemed a "symbol commonly known to relevant enterprises or consumers." 2. Consmat Enterprise Co., Ltd. (the respondent) argued as follows: On 3 November 1999 it received application forms from the Import Department of the Taiwan Tobacco and Wine Monopoly Bureau (TTWMB) and began the application process for approval to import "Chien Chuan 38° Aromatic Special Grade Erguotou." TTWMB accepted the application the same day and the following month, on 3 December 1999, the respondent filed with the IPO for registration of its "Chien Chuan" and "Chilin" trademarks. Thus the respondent's applications for import approval and trademark registration clearly pre-dated the 23 December 1999 date of entry into the market of the complainant's product. In addition, since entering the market, the respondent's product has been sold under the "Chien Chuan" trademark, which can be clearly differentiated from the complainant's products. In its November 1999 application to the TTWMB for import approval, however, the respondent failed to provide any evidence of the product's trade dress and thus cannot substantiate its claim that the trade dress in question was in use prior to that of the complainant. Furthermore, written documentation provided by the TTWMB clearly indicates that the import of respondent's "Chien Chuan Special Grade Erguotou" and Chien Chuan Aromatic 38° Special Grade Erguotou" did not actually begin until after the complainant's application for approval to market "Kinmen 38° Special Grade Kaoliang Liquor" on 23 December 1999, formally entered the market in January 2000 and began retail sales on 6 July 2000. 3. The labeling and external appearance of the "Chien Chuan Special Grade Erguotou" and "Chien Chuan Aromatic 38° Special Grade Erguotou" imported by the respondent and the "Special Grade Kaoliang Liquor" and "Kinmen 38° Special Grade Kaoliang Liquor" produced by the complainant, aside from differences in the product names and the style of calligraphy in which they are written, both share a "long-necked clear glass bottle bearing a twin dragon design." As the respondent is in the business of distributing kaoliang liquor and other alcoholic beverage products, it is obviously well aware of the "twin dragons design" used on the "Special Grade Kaoliang Liquor" and "Kinmen 38° Special Grade Kaoliang Liquor" produced by the complainant. The respondent, with no consideration or effort at creating its own brand name, used as product names on bottles of its imported product the "Chien Chuan Special Grade Erguotou" and "Chien Chuan Aromatic 38° Special Grade Erguotou" names, which are similar to those of the complainant's products and merely exchange the wording "kaoliang liquor" for "erguotou," as that type of liquor is also commonly known in the market. The respondent not only failed to create its own distinctive trade dress, but, given its use of similar labeling, external bottle appearance and graphic design, was determined to have imitated the well-known trade dress of the complainant. Based on the above facts, the respondent was found in violation of the provisions of Article 24 of the Fair Trade Law and the case was therefore disposed under the forepart of Article 41 of the same law.Appendix: Consmat Enterprise Co., Ltd.'s Uniform Invoice Number: 04400231 Summarized by Chiang, Kou-Lun; Supervised by Wu, Ting-Hung