Alleged violation of Articles 20 and 24 of the Fair Trade Law by Batman International Trade Corporation
Chinese Taipei
Case:
Alleged violation of Articles 20 and 24 of the Fair Trade Law by Batman International Trade Corporation
Key words:
Batman, symbol, copying
Reference:
Fair Trade Commission Decision of 22 April 1998 (the 337th Commission Meeting); Disposition (87) Kung Ch'u Tzu No. 097
Industry:
International Trade Industry (4040)
Relevant Laws:
Summary:
DC Comics and Warner Bros. [the complainants] filed a complaint against Batman International Trade Corporation [the respondent], which is summarized as follows:
(1) DC Comics was the copyright and trademark owner of “Batman” [Chinese version of the BATMAN trademark], "BATMAN" [English trademark], the Batman character design, Batman logo and related designs and articles (such as the Batmobile). The Batman motion picture series premiered on 7 October 1990, and Warner Bros. owned the motion picture copyright. DC Comics registered the trademarks in many other countries and obtained registrations in many classes of goods in Chinese Taipei, such that they were world-famous trademarks.
(2) The radar detector that the respondent sold used "BATMAN" and a bat device for its trademark. The respondent used in its advertisements a design similar to Warner Bros.' Batman character, and also used the word Batman [in Chinese and in English] as a part of its company name. The respondent obviously used the BATMAN trademark and device for illegal gains.
(3) The respondent filed an application in the name of Li Lien-chiang [Li] with the National Bureau of Standards [NBS] for trademark registration regarding "Batman" and the related objection, which were designated for use on the radar detector. DC Comics filed an opposition, and the NBS consequently invalidated the respondent's application. In addition, Li filed applications with the Copyright Commission to record copyright for designs similar to DC Comics' bat device and Batman mask. Li obtained copyright recordation Nos. 53075 and 53076. Such acts seriously infringed DC Comics' copyright for derivative work including adaptation. DC Comics filed a petition with the Copyright Commission to cancel the recordation.
(4) The relevant public knew the name Batman and the related device as a symbol for goods and services. Where used similarly or identically, though not on the same class of goods or services, the consumer would be led to mistake that the DC comics had produced (provided), or authorized to produce (provide), the goods (services). Article 20 of the Fair Trade Law (“the Law”) applies here, which prohibits passing-off "[where] such use causes confusion with goods (services) of any other person". The respondent's acts also seriously affected the trading order and resulted in a deceptive and obviously unfair situation.
Regarding Article 20 of the Law:
(1) DC Comics was the copyright and trademark owner of the Batman character design, Batman logo and other Batman-related designs and articles (such as the Batmobile). Warner Bros. was the Batman motion picture series copyright owner. "Batman" (both in Chinese and in English), the Batman character design, and Batman logo were used in comic books, motion pictures and TV series, as well as on clothes, sports game equipment, shoes, photography equipment, bed sheets, quilts and many other goods and services to signify the source of the products (services). " Batman" and "Batman character device" obtained trademark registration in many countries, including Canada, Japan, Korea, Singapore and Australia. Since 1946, in Chinese Taipei there have been more than 20 registrations for " Batman" [in English] and more than 20 for the Chinese version. There was therefore no doubt the Batman name, character design and logo were well known to the relevant public.
(2) The respondent registered the name "Batman" as its company name in 1996 with a business scope of "sales/purchases of automobile parts and accessories, miscellaneous articles for automobiles; sales/purchases of various kinds of backup [car traveling in reverse] warning devices, audio informing device, and speeding detector." The respondent used as trademarks the name Batman, in Chinese and English, and a bat device on the radar detector. Most of the respondent's trading counterparts were automobile drivers, and most of its advertisements were published in automobile-related magazines. The respondent's specialty product was thus clearly distinguishable from those the complainants produced, or authorized to be produced. Therefore, the ordinary relevant public was not likely to confuse or mistake the source of the products or services. The respondent's actions did not constitute "confusion" as prohibited in the Law.
(3) The respondent used the name "Batman," both in Chinese and in English, as a specific portion of its company name, which was identical to the complainants' registered trademarks "Batman". However, the respondent applied for company registration in accordance with the provisions of the Company Law. There was no evidence to prove the respondent actively engaged in any act to confuse or mislead people into misidentification or misbelief with respect to the complainants' business. Therefore, we could not find the respondent in violation of Article 20 of the Law.
(4) In conclusion, we could not find the respondent in violation of Article 20(1)(i) or Article 20(1)(ii) of the Law.
Regarding Article 24 of the Law:
(1) The respondent filed trademark applications in accordance with the Trademark Law to register its trademarks. However, such defense was not admissible since the name of its trademark device was Batman, in Chinese and in English, and the device was similar to the complainants' Batman mask and bat design. A comparison showed they were substantially similar. It was difficult not to suspect copying. The complainants invested large sums of money in the market for their marks, and the respondent used "Batman" and the related device to signify its product. Although the parties' products were distinguishable and had different markets where there was no likelihood of consumer confusion or misidentification, the respondent was free riding on another person's business reputation, which was obviously unfair. The respondent's acts were against business ethics, sufficient to adversely affect the trading order, and were found in violation of Article 24 of the Law.
(2) The respondent argued that it had voluntarily modified its marks by creating another new mark, "SWS GOLDEN BAT," after the complainant lodged the opposition, accompanied by evidence such as a pro forma invoice for the tooling and pictures of the subject product using the new mark. However, such post-complaint modification did not affect the above finding of violation.
Summarized by Tu, Hsing-feng
Supervised by Pai, Yu-chuang
Appendix:
Batman International Trade Corporation’s Uniform Invoice No.: 96959795