Chin Ch'i E [translated as and hereinafter "Golden Penguin"] Tapes Ltd.'s was complained for using the trademark "Ch'i E [Chinese for "Penguin"] in violation of the Fair Trade Law

Chinese Taipei

Case:

Chin Ch'i E [translated as and hereinafter "Golden Penguin"] Tapes Ltd.'s was complained for using the trademark "Ch'i E [Chinese for "Penguin"] in violation of the Fair Trade Law

Key Words:

trademark that is known to the relevant public, marking that is identical or similar use ; [use] leading to confusion with the products of another person

Reference:

Fair Trade Commission Decision of 13 March 1996 (the 230th Commission Meeting); Disposition (85) Kung Ch'u Tzu No. 044

Industry:

Publishing Industry (8020)

Relevant Laws:

Article 20(1):1 of the Fair Trade Law

Summary:

1. The U.S. company Munsingwear Corporation has been established for more than one hundred years since 1885. The company's leisure shirts, knitted shirts and all kinds of golf wear and accessories are distributed throughout the world and are well known to the ordinary consumer. The Munsingwear Company has begun using its penguin logo as a trademark since 1886. As its goods were distributed widely, the penguin logo became more and more widely known. When consumers see the penguin logo on products, although they may not be able to identify from which company the product originates, they will certainly identify the goods as coming from a specific source [i.e., from the owner of the penguin logo trademark]. There is no doubt that the penguin logo trademark symbolizes the Munsingwear Company [as the source of goods that bear the mark]. In 1964 the Munsingwear Company licensed the complainant to use its trademark in Japan in conjunction with wearing apparel. In 1978 the complainant licensed a company of Chinese Taipei, Man Hsin Enterprises, as the agent for Chinese Taipei. Sales were made through Man Hsin and as sales grew so did the reputation of the products.

That the trademark of "penguin" logo was already well know to the relevant public as early as 1981 and 1982 can be seen from media reports at the time on the counterfeiting problems faced by the owner of the penguin logo trademark. The Munsingwear Company formally registered its trademark in Chinese Taipei in 1971 and then transferred the trademark to the complainant in 1985. During the past ten years the complainant has taken steps to obtain dozens of trademark registrations for the penguin logo in Chinese Taipei. The designated goods for such registrations are varied and include the right of exclusive use for records and tapes. It was often heard that people counterfeited the penguin trademark and being sentenced by the courts or some administrative oppositions were filed against people using the penguin graphic to apply for trademark registration. In summary, whether we look at the sales amount or time of the products bearing the penguin trademark, the counterfeiting cases of the trademark, the advertising of products with the trademark or the application for the rights of such trademark, the penguin trademark of the complainant has clearly become well known to the relevant public.

2. When the sanctioned party was established in 1983 the penguin trademark had already become well known to the relevant public as noted above. The sanctioned party used for its tapes and compact disk sound recordings a penguin trademark which was taken from a magazine advertisement and identical to the penguin trademark used by the complainant for long time. Although the sanctioned party asserted that the products differed from those on which the complainant uses the mark, i.e., clothing, on which it used the trademark were tapes and compact disk and consumers are likely to think that there were licensing or other sponsorship between the sanctioned party and the complainant even if the consumers might not think that the records and tapes were from the complainant. Furthermore, the sanctioned party was fully aware that the logo was registered for use by others but still used the identical trademark as the symbol of its products It cannot say that the sanctioned party did not have the intention to misappropriate the trademark. The sanctioned party's conduct obviously has violated Article 20(1)(i) of the Fair Trade Law, which provides that: "An enterprise shall not commit any of the following acts with respect to the goods or services provided by its business operation: use in an identical or similar manner of the name of another person, the name of a business establishment, a corporate name, trademark, product container packaging, external appearance or other symbol signifying the goods of another persons that are commonly known to the relevant public, if such use causes confusion with goods of any other person, or sale, transport, export or import of goods using such symbols".

　

Summarized by Lin, Ch'iu-miau
Supervised by Hsu, Chau-ying

Appendix:
The Sanctioned Party's Uniform Invoice Number: 12482523

＊: For information of translation, click here

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