Hsin Li Filling Station Enterprise Co., Ltd. was complained for using “Hsin Li [Sony]” as part of its company name in violation of Article 20(1)(ii) and Article 24 of the Fair Trade Law
Chinese Taipei
Case:
Hsin Li Filling Station Enterprise Co., Ltd. was complained for using “Hsin Li [Sony]” as part of its company name in violation of Article 20(1)(ii) and Article 24 of the Fair Trade Law
Key Words:
company name, appropriating the fruits of another’s labor
Reference:
Fair Trade Commission Decision of September 26, 2002 (the 568th Commissioners’ Meeting); Letter (91) Kung San Tzu No. 0910009617
Industry:
Petroleum products and fuels wholesaling (4531)
Relevant Law:
Summary:
1. A letter of complaint was received from the Japanese Sony Corporation, summarized as follows: The complainant is a globally-known corporation engaged in the manufacture and sale of various home electronics products such as computers, televisions, VCRs and related services, and has long used both “Sony” and “Hsin Li” on its products. The name has been in use for a long period of time and employed in media promotions, and Sony’s products have been well-received by consumers and enterprises since their introduction in 1953 by Sony’s Taiwan agent. It was quite unexpected that the Hsin Li Filling Station Enterprise Co., Ltd., fully aware that “Hsin Li/Sony” was a well-known trademark, should have applied for registration of the company name Hsin Li Filling Station Enterprise Co., Ltd. in 1997 with the Chinese “Hsin Li” as the special portion of its name, and to have used the name, without obtaining the consent of the complainant. The name is used with respect to the repair and maintenance of cars and machinery and the operation of convenience stores and parking lots. Since the complainant is engaged in the repair of electrical equipment and retail services in connection with home electronics and accessories, confusion and misidentification would be created in the market regarding possible affiliation between the complainant and the respondent in the areas of maintenance, agency, or licensing, in possible violation of Article 20 or 24 of the Fair Trade Law.
2. Review by the Fair Trade Commission (FTC) showed the complainant to be an international corporate group, established in 1946, with a product line including audio-visual equipment, television sets, computers, peripherals, and telecommunications products. The appeal of its “Sony” mark was central to its corporate image and brand promotion throughout the global markets it entered. The company’s electronics products were imported and sold in Taiwan from 1953. Brand marketing in Taiwan took place primarily using the “Sony/Hsin Li” representation; the company thereafter obtained trademark registration for various other marks, including “Hsin Li Pai,” “Sony/Hsin Li Pai,” “Sony/Hsin Li -- ,” “Sony/Hsin Li,” and “Hsin Li” during a period beginning in 1967. In consideration of the complainant’s advertising and marketing materials, the duration of its marketing efforts, the scope of media coverage, and its point-of-sale locations, the complainant’s above trademarks should have been sufficient to serve as symbols that clearly indicate the source of its home electronics products and the related maintenance services, symbols well known to the relevant consumers and enterprises. In recent years, Sony had organized its Taiwan interests into a group, with its central planning and operations under Sony International Taiwan. The group included Sony International Taiwan, Sony Electronics Marketing of Taiwan Ltd., Suo Ni [Sony] Communications Networks of Taiwan, Sony Music Entertainment (Taiwan) Ltd., the AXN action channel, Super Television, and Sony Ericsson-Taiwan. Its operations included home electronics, visual entertainment products, consumer technology, Internet and entertainment products. Its operations, however, whether in Taiwan or in overseas markets, had never included petroleum products or filling station services. While the complainant did register the defensive mark “Sony/Hsin Li -- ” (Reg. no. 000675147), designated for use on gaseous fuels, liquid fuels, solid fuels, industrial oils, natural gas, gasoline, and petroleum (under the principal mark Reg. no. 0066226, designated for use on cameras, slide projectors, movie projectors, video recorders, video players, and various associated equipment, attachments, and parts), it did not provide any evidence of ever having used said defensive mark on related petroleum products or filling station services. Though the complainant did operate a diverse array of enterprises, it had not yet used the “Sony” mark on sales of petroleum products or filling station services. The complainant’s use of the “Sony” wording as a representation, however, whether in a brand name or a company name, was most often accompanied by the word “Sony” in upper-case letters. The respondent’s company name, however, was Hsin Li Filling Station Enterprise Co., Ltd., which was presented at its place of business as “Hsin Li Filling Station.” This designation had already clearly set out the scope of operations of the business, one clearly different from both the category in which the complainant was using its own “Sony” designation as well as different in the manner of its use, and therefore it did not violate the “similar or identical use” clause set forth in Article 20 of the Fair Trade Law. In addition, the complainant’s “Sony” mark had always been a unified text set in relatively square letters with no distinctive patterning, and often in the form of the large block letters “SONY”; its registered defensive mark “Sony/Hsin Li -- ” was made up of the elements “Sony,” “Hsin Li,” and “ – .” The respondent’s “Hsin Li Filling Station,” however, was made up of the filling station’s address set out in white letters on a green background, with the “Li” character italicized and set out in an orange color, and with the addition of Formosa Petroleum set out beside the address. Observation of the whole showed that the respondent was not actively using the “Sony,” “ -- ,” or “Suo Ni” designations in its “Hsin Li Filling Station” designation, which was insufficient to cause consumers to form the impression that the respondent is an affiliated enterprise of the complainant merely due to its use of “Hsin Li Filling Station” as the designation in its filling station sign. Neither would consumers have been likely to be confused about the source of the services as a result of any association produced in their minds between the complainant and the source of the respondent’s services. Therefore, based on the existing evidence, the respondent’s ordinary use of the abbreviated company name, which include no active attempt to confuse consumers, did not constitute violation of Article 20(1) of the Fair Trade Law.
3. The representations employed in the complainant’s billboards, print advertisements, and company name generally consisted of the two characters “Hsin Li” combined with “Sony,” or of “Sony” combined with the Chinese transliteration “Suo Ni.” Those of the respondent, however, as used in the billboards, banners, and address markers at its filling station locations, all included the designation “filling station” as part of the total representation, indicating the nature of its business, and also used differing type styles for different characters, as well as setting the “Li” character off in an orange color, allowing complete differentiation between the respondent’s and the complainant’s scopes of business and corporate images. While “Hsin Li” [Sony] was a name generally known to the relevant consumers and enterprises, the associated impression was that it was the distinctive portion of a brand associated with home electronics, computer peripherals, or entertainment enterprises, or the associated company name. The scope of the complainant’s operations had never included the sale of petroleum products or filling station services, and the complainant also did not deny the fact that it had never used “Hsin Li” or related designations on petroleum products or filling station services. Thus there was no area in which the complainant and respondent would find themselves in competition with regard to pricing, quality, volume, service, or any other aspect relating to the market for filling stations or petroleum products. Further, the respondent had never used either the “Sony” or “Suo Ni” wording in its representations as a means of actively taking advantage of another’s business reputation, nor had it attempted to appropriate the fruits of another’s labor through its use of the “Hsin Li Filling Station” representation, and to therefore obtain trading opportunities it would not have otherwise had or to affect the trading order and the functions of the market. Therefore, in the light of existing evidence, the FTC held that that the respondent did not violate Article 24 of the Fair Trade Law.
Appendix:
Hsin Li Filling Station Enterprise Co., Ltd.’s Uniform Invoice Number: 16279162
Summarized by Wu, Lieh-Ling; Supervised by Wu, Ting-Hung