Tel-Ox World First Trading Co., Ltd. alleged Hung Tu Enterprises Ltd. violated Articles 20 and 24 of the Fair Trade Law

Tel-Ox World First Trading Co., Ltd. alleged Hung Tu Enterprises Ltd. violated Articles 20 and 24 of the Fair Trade Law

Chinese Taipei

Case:

Tel-Ox World First Trading Co., Ltd. alleged Hung Tu Enterprises Ltd. violated Articles 20 and 24 of the Fair Trade Law

Key Words:

symbol (trade dress), to imitate

Reference:

Fair Trade Commission Decision on June 20, 2002 (the 554th Commissioners' Meeting); Letter Kung San Tzu No. 0910005844

Industry:

Paints, Varnishes, Lacquers, Pigments Manufacturing (1810)

Relevant Law:

Articles 20 and 24 of the Fair Trade Law

Summary:

1. The complainant Tel-Ox World First Trading Co., Ltd. (Tel-Ox) sent a complaint letter to the FTC alleging as follows:
　　The TELOX spray paint products produced by Tel-Ox are characterized by a cylindrical tin can labeled with the words “TELOX” and “TELOX Spray Paint” (the former in English and the latter in five Chinese characters), those five English letters and five Chinese characters being arranged against a white background in colored rows of peach, red, purple, blue, and green respectively. The words “TELOX” (in English) and “TELOX” (in Chinese) are written vertically, and the words “Spray Paint” are written horizontally. The packaging, clear and simple and aesthetically pleasing, stands out from other brands of spray paint. This packaging, which was first introduced to the Taiwan spray paint market by the complainant, also has a very distinctive shape. By all indicators such as its duration of marketing, sales volume and monetary amount, market share, and amount of advertising and promotion, TELOX Spray Paint has already achieved the threshold of being commonly known to relevant enterprises or consumers. It can thus be deemed a symbol (trade dress) commonly known to relevant enterprises or consumers. The TEDLO spray paint produced and sold by the respondent is packaged similarly to the complainant's TELOX, in a cylindrical tin can with the name “TEDLO” written in five English letters and five Chinese characters in five colors against a white background. The five Chinese characters representing “TEDLO Spray Paint” are arranged in five colored rows of peach, red, purple, blue, and green. The words “TEDLOW” (in English) and “TEDLOW” (in Chinese) are written vertically, and the words “Spray Paint” are written horizontally. The Chinese-language instructions on the outer packaging are identical to the Chinese-language instructions on the complainant's product. The respondent's flier is also labeled with the wording “TEDLO” and “KILEX” (each comprising three Chinese characters plus five English letters, respectively) which, viewed in totality, are similar to the wording “TELOX” (in three Chinese characters and five English letters) on the complainant's product. The respondent's conduct therefore is suspected of violating Articles 20 and 24 of the Fair Trade Law.

2. The market share of TELOX and other evidence provided by the complainant suffice to prove that the TELOX (Chinese and English) trademarks are symbols commonly known to relevant enterprises and consumers. As for the complainant's assertion that its TELOX product's outer packaging was an innovation in the Taiwan market and that its shape is very distinctive and the package and trade dress are symbols (trade dress) commonly known to relevant enterprises and consumers: numerous brands of spray paint on the market are packaged in tin cans with a white background; members of the trade and the general consumer public would tend to rely primarily on the trademarks to identify the source of the goods rather than on the package color and tin can.

　　Moreover, the complainant changed the appearance of its packaging in December 2000, with the words “TELOX” (in Chinese) and “TELOX” (in English) arranged horizontally from left to right, revealing that the complainant's packaging has not been a uniform cylindrical [can] with white background. The complainant's “TELOX” (in Chinese) and “TELOX” (in English) trademarks are symbols commonly known to relevant enterprises and consumers, but the container, packaging, and appearance of TELOX Spray Paint cannot be deemed symbols (trade dress) as referred to in Article 20 of the Fair Trade Law. Also, the three Chinese characters representing “TEDLO” on the respondent's product are arranged vertically in the colors red, green, and indigo, with the two Chinese characters meaning “Spray Paint” underneath, arranged horizontally from left to right in the colors red and light blue. The English letters “TEDLO” are in the colors red, green, peach, yellow, and blue, and there is a brown star shape set inside an “O”. And the Chinese characters representing the names “TELOX” and “TEDLO” are different. Viewed separately at different times and in different places, they would be unlikely to cause confusion or misidentification in violation of Article 20 of the Fair Trade Law.

3. Although in appearance the respondent's “TEDLO” and “KILEX” spray paints share the same cylindrical tin can with a white background as that of the complainant, a cylindrical tin can with a white background is a container already customarily used in the industry. Furthermore, the text layout, font sizes, colors, and fonts of “TEDLO” and “KILEX” differ in appearance from those of the complainant's TELOX spray paint. And the layouts used by both are also common layouts in the industry - they are not proprietary colors or layouts of the complainant. Therefore, it could not be concluded that the product container used by the respondent imitates the appearance (trade dress) of the complainant's product or exploits the fruits of another's work in violation of Article 24 of the Fair Trade Law.

Appendix:

Hung Tu Enterprises Ltd.’s Uniform Invoice Number: 86804371

Summarized by Ho, Yin-Ju;
Supervised by Yeh, Tine-Fu

＊＊: For information of translation, click here

1.	The complainant Tel-Ox World First Trading Co., Ltd. (Tel-Ox) sent a complaint letter to the FTC alleging as follows: 　　The TELOX spray paint products produced by Tel-Ox are characterized by a cylindrical tin can labeled with the words “TELOX” and “TELOX Spray Paint” (the former in English and the latter in five Chinese characters), those five English letters and five Chinese characters being arranged against a white background in colored rows of peach, red, purple, blue, and green respectively. The words “TELOX” (in English) and “TELOX” (in Chinese) are written vertically, and the words “Spray Paint” are written horizontally. The packaging, clear and simple and aesthetically pleasing, stands out from other brands of spray paint. This packaging, which was first introduced to the Taiwan spray paint market by the complainant, also has a very distinctive shape. By all indicators such as its duration of marketing, sales volume and monetary amount, market share, and amount of advertising and promotion, TELOX Spray Paint has already achieved the threshold of being commonly known to relevant enterprises or consumers. It can thus be deemed a symbol (trade dress) commonly known to relevant enterprises or consumers. The TEDLO spray paint produced and sold by the respondent is packaged similarly to the complainant's TELOX, in a cylindrical tin can with the name “TEDLO” written in five English letters and five Chinese characters in five colors against a white background. The five Chinese characters representing “TEDLO Spray Paint” are arranged in five colored rows of peach, red, purple, blue, and green. The words “TEDLOW” (in English) and “TEDLOW” (in Chinese) are written vertically, and the words “Spray Paint” are written horizontally. The Chinese-language instructions on the outer packaging are identical to the Chinese-language instructions on the complainant's product. The respondent's flier is also labeled with the wording “TEDLO” and “KILEX” (each comprising three Chinese characters plus five English letters, respectively) which, viewed in totality, are similar to the wording “TELOX” (in three Chinese characters and five English letters) on the complainant's product. The respondent's conduct therefore is suspected of violating Articles 20 and 24 of the Fair Trade Law.
2.	The market share of TELOX and other evidence provided by the complainant suffice to prove that the TELOX (Chinese and English) trademarks are symbols commonly known to relevant enterprises and consumers. As for the complainant's assertion that its TELOX product's outer packaging was an innovation in the Taiwan market and that its shape is very distinctive and the package and trade dress are symbols (trade dress) commonly known to relevant enterprises and consumers: numerous brands of spray paint on the market are packaged in tin cans with a white background; members of the trade and the general consumer public would tend to rely primarily on the trademarks to identify the source of the goods rather than on the package color and tin can.
2.	Moreover, the complainant changed the appearance of its packaging in December 2000, with the words “TELOX” (in Chinese) and “TELOX” (in English) arranged horizontally from left to right, revealing that the complainant's packaging has not been a uniform cylindrical [can] with white background. The complainant's “TELOX” (in Chinese) and “TELOX” (in English) trademarks are symbols commonly known to relevant enterprises and consumers, but the container, packaging, and appearance of TELOX Spray Paint cannot be deemed symbols (trade dress) as referred to in Article 20 of the Fair Trade Law. Also, the three Chinese characters representing “TEDLO” on the respondent's product are arranged vertically in the colors red, green, and indigo, with the two Chinese characters meaning “Spray Paint” underneath, arranged horizontally from left to right in the colors red and light blue. The English letters “TEDLO” are in the colors red, green, peach, yellow, and blue, and there is a brown star shape set inside an “O”. And the Chinese characters representing the names “TELOX” and “TEDLO” are different. Viewed separately at different times and in different places, they would be unlikely to cause confusion or misidentification in violation of Article 20 of the Fair Trade Law.
3.	Although in appearance the respondent's “TEDLO” and “KILEX” spray paints share the same cylindrical tin can with a white background as that of the complainant, a cylindrical tin can with a white background is a container already customarily used in the industry. Furthermore, the text layout, font sizes, colors, and fonts of “TEDLO” and “KILEX” differ in appearance from those of the complainant's TELOX spray paint. And the layouts used by both are also common layouts in the industry - they are not proprietary colors or layouts of the complainant. Therefore, it could not be concluded that the product container used by the respondent imitates the appearance (trade dress) of the complainant's product or exploits the fruits of another's work in violation of Article 24 of the Fair Trade Law.