Yu Cheng Co., Ltd. violated the Fair
Trade Law for copying the appearance and patterns of Mei Wu Fa Co., Ltd.'s shower gel
containers
Chinese Taipei
Case:
Yu Cheng Co., Ltd. violated the Fair Trade Law for copying the
appearance and patterns of Mei Wu Fa Co., Ltd.'s shower gel containers
Key words:
passing off, illegal copy
Reference:
The Fair Trade Commission Decision of October 8, 1997 (the 310th
Commission Meeting); Disposition (86) Kung Chu Tzu No. 182
Industry:
Hair Care Products Manufacturing Industry (2010)
Relevant Laws:
Articles 20 and
24 of the Fair Trade Law
Summary:
- The Fair Trade Commission (FTC) investigated the exterior design,
packaging, labels and patterns on the containers used respectively by the complainant and
the sanctioned party, and found similarity between them in terms of details such as the
design and arrangement of patterns, color arrangement, and texts. However, words like
"Sunflower Tartaric Acid Shower Gel" " AHA Shower Gel" and
"Tartaric Acid Skin Care Shower Gel" "AHA Body Cleanser" on the front
of the containers and those on the back including a list of ingredients "sodium
laureth sulfate, sunflower extract" and "sodium lauryl sulfate, sunflower
extract, prodyleve glycol" were all descriptive terms. Such terms are commonly used
on similar products to explain their qualities, ingredients and typology, which can hardly
be deemed expressions that help identify the origin of a product or a service. Therefore,
the FTC did not find a violation of Article 20 of the Fair Trade Law by the sanctioned
party based on the above facts.
- Moreover, pursuant to Article 24 of the Fair Trade Law, which states
"aside from the other provisions in this Law, an enterprise also shall not engage in
any deceptive or obviously unfair acts that can adversely affect trading order," an
enterprise that engages in name association or improperly copying the exterior appearance
or expression of another's products will be found exploiting the results of another's hard
work, which contravenes the ethics of business competition and constitutes unfair
competition. The investigation showed that the sanctioned party did not make active
efforts to make its trademark a conspicuous part of the label of its product
differentiation. Instead, the sanctioned party used a picture of a sunflower surrounded by
two purple circles as part of its product's label, and among the text printed on the
middle of the container added a trademark of sunflower along with text label indicating
" Tartaric Acid Skin Care Shower Gel" in white and "Shower Gel" in
yellow. As a result, the overall design of the container of the sanctioned party's product
was similar or identical to that of the complainant's "Mei Wu Fa Sunflower"
product in terms of the packaging, shape, pattern, arrangement, color, and text.
- Moreover, as the sanctioned party earns its livelihood by selling
shampoos and related products, it should be aware of the features of the complainant's
"Mei Wu Fa Sunflower" products in terms of the color arrangement and patterns on
their containers. However, when the sanctioned party first marketed its product in
question, it put on the container words like "Sunflower" and " Tartaric
Acid Skin Care Shower Gel" in white, which failed to highlight the difference of
color arrangement, patterns on the front labels between its own products and those of the
complainant's. In addition, as the words like "Sunflower" and "AHA Body
Cleanser" were all placed in similar colors and sizes on the identical locations, the
overall appearance, color arrangement, and label patterns of the sanctioned party's
product were nearly identical to those of the complainant's "Mei Wu Fa
Sunflower" product, which was characterized by the trademark of "Mei Wu Fa
Sunflower" and labels indicating "Tartaric Acid Shower Gel" and "AHA
Shower Gel." The similarity between the two products in terms of their labels, texts,
containers and ingredients was then greater than the distinguishing characteristics of
their respective trademarks, so the possibility that the sanctioned party intentionally
associated itself with the complainant's reputation cannot be excluded. Though the
sanctioned party later on revised its trademark on the particular product, this does not
change the fact that its original design could easily have lead consumers to associate it
with the "Mei Wu Fa Sunflower" products at first sight. Therefore, it can be
concluded that the sanctioned party intentionally copied the label patterns and appearance
of the container of the complainant's product and by doing so associated its product with
the complainant's goodwill, and exploited the results of the complainant's hard work. Such
an act by the sanctioned party has constituted a violation of Article 24 of the Fair Trade
Law.
Summarized by Li, Wen-shiu
Supervised by Wu, Tin-hung
＊＊: For information of translation, click here