Violation of the Fair Trade Law by Best Shine Nutrition Co., Ltd. for counterfeiting another person's symbol that is commonly known to the relevant public
Chinese Taipei
Case:
Violation of the Fair Trade Law by Best Shine Nutrition Co., Ltd. for counterfeiting another person's symbol that is commonly known to the relevant public
Key Words:
Premium Kaoliang, Jing Goliang, confusion
Reference:
Fair Trade Commission Decision of October 7, 1998 (the 361st Commission Meeting); Disposition Ref. (87) Kung Ch'u Tzu No. 218
Industry:
Alcohol Production Industry (1181)
Relevant Laws:
Article 20(1)(i) of the Fair Trade Law
Summary:
Kinmen Distiller Industrial Co., Ltd. (complainant) filed a complaint against Best Shine Nutrition Co., Ltd. (respondent and disposed) which is summarized as follows:
The "white golden dragon" trademark affixing on the packaging of Premium Kaoliang produced by the complaintant is recognized as a famous mark by the National Bureau of Standards (NBS). The container of the respondsent's "Jing Goliang" is similar to that of "Premium Kaoliang" with a "twin dragons playing with a fire ball" mark that is similar to the complainant's "white golden dragon" trademark. In addition, the respondent depicted the third character of Jing Goliang's Chinese name in a font similar to the fourth character of Premium Kaoliang's Chinese name. This caused confusion between Premium Kaoliang and Jing Goliang.
Production of Premium Kaoliang began in 1953. In addition to the aforesaid famous mark, its packaging features a "long-neck and round transparent glass bottle." Such a container may be common in the alcohol industry but its use in conjunction with the "white golden dragon" trademark over a long period of time is well-known to the relevant public and is sufficient to represent it as the source of the product. In addition, the product is characterized by good quality, a long history of production, and wide distribution, both locally and abroad. In 1998, the product sold over 12 million bottles with a value of more than NT$44 billion. The NBS and the Anti-counterfeiting Committee have both recognized the "white golden dragon" mark as a famous mark. Thus the trade dress of the product -- the "white golden dragon" mark affixing on a long-necked, round transparent glass bottle -- constitutes a symbol commonly known to the relevant public as referred to under Article 20(1)(i) of the Fair Trade Law (FTL).
The overall appearance of Jing Goliang is considered confusingly similar to the trade dress of Premium Kaoliang based on the following comparison. First of all, both products' packaging are labeled in white featuring two dragons--one dragon on each side, both curling inward to face each other. In terms of shape and position, the fire ball device in the Jing Goliang's mark is similar to the circle in between the dragons of Premium Kaoliang's mark (containing Chinese characters and a liquor tank). Furthermore, the respondent has labeled Jing Goliang's Chinese name in the middle of the "twin dragon" mark with the third character depicted in a font similar to the second character of the Chinese name for "Kaoliang." When given a rough look, the Chinese name of Jing Goliang is confusingly similar to the Chinese name for "Kinmen Kaoliang." In addition, Jing Goliang's product name is labeled in a position similar to Premium Kaoliang's product name. Both products use the long-neck round transparent glass bottle. In terms of appearance and pronunciation, "Jing Goliang"--the English name of the respondent's product as labeled on the packaging--is similar to the English name "Kao Liang" as depicted on the complainant's product. Therefore, observed as a whole, both products are extremely similar -- with regard to the design of their packaging, the color of the labeling, or the sound of their names. When viewing the two products at different points of time at different places, an ordinary consumer may easily mistake them as the same product or coming from the same source. Additionally, although different by content, the descriptive literature of the two products is also similar in terms of color, size, and position, and it is difficult to distinguish one from the other. When the two products are displayed together, it is difficult for the consumer to tell them apart by the mere difference between the clear color of Premium Kaoliang and the slightly yellow color of Jing Goliang. In conclusion, the respondent is found to be in violation of FTL Article 20(1)(i).
The respondent argues that it has rectified the packaging of its product (by changing and depicting the product name in two lines) and that it has recalled the offending product since October 1997. However, the Fair Trade Commission has found the product is still in circulation and has not seen the alleged rectified packaging as recent as September 1, 1998. Admission of the respondent's argument regarding correction measures does not affect the finding of the respondent in violation of FTL Article 20(1)(i).
Summarized by Yang, Chung-Lin
Supervised by Pai, Yu-Chuang
Appendix:
Best Shine Nutrition Co., Ltd.’s Uniform Invoice No.: 72060619