No disposition was made in the case of Taipei Icebar International Co., Ltd. was complained to violate the Fair Trade Law by improper using other's trademark

Case:

No disposition was made in the case of Taipei Icebar International Co., Ltd. was complained to violate the Fair Trade Law by improper using other's trademark

Key Words:

ordinary use, deliberate acts, business activity, confusion, goodwill, fruits of labor

Reference:

Fair Trade Commission Decision of February 5,2004 (the 639th Commissioners' Meeting); Letter Kung San Tzu No. 0930000922

Industry:

Coffee/Tea Shops and Bars (5120)

Relevant Laws:

Article 20 and 24 of the Fair Trade Law

1. This case originated with a complaint filed by Lo Chi-Chuan, owner of Ice Monster ice house (hereinafter called "Ice Monster"), stating that ever since its establishment in 1995, Ice Monster had devoted itself to innovation and improving quality, with a particular success being the 1997 launch of a mango ice product that attracted coverage by major television stations, newspapers, and magazines. As a result, "Ice Monster" was already a symbol commonly known to relevant enterprises or consumers. Taipei Icebar International Co., Ltd. (hereinafter called "Taipei Icebar") was established in June 2002 and set up domestic branches at various places under the name of Taipei Icebar [whose Chinese-language name was Taipei Bing Kuan, in which Bing Kuan was identical to the Chinese-language name for Ice Monster]. The complaint alleged that Taipei Icebar, instead of attempting to create its own brand, marketed products identical or similar to those of Ice Monster with the intention of causing confusion among consumers. Taipei Icebar was thus alleged to have violated Articles 20 and 24 of the Fair Trade Law (FTL).
2. Findings of the Fair Trade Commission (FTC) after investigation:
   Ice Monster was the business name of a sole proprietorship retailing ice products. Although the name Ice Monster was determined by the Ministry of Economic Affairs' Intellectual Property Office to be a distinctive mark, Ice Monster provided no information on its volume of advertising, volume of sales, market share, or market surveys as substantiating evidence. Therefore, the currently available information was insufficient to prove that "Ice Monster", as the distinctive portion of the service mark or the business name, was commonly known to the relevant enterprises or consumers. Taipei Icebar operated an ice products franchise business in which a technology transfer contract was entered into by each franchise shop, which in turn would register its business name as a retailer of ice products on its own in its own locality, pursuant to the Business Registration Act. Therefore, the two parties in the present case differed in their marketing, customers, and sales channels. In addition, the trade dress used by the Taipei Icebar franchise shops was a design comprising an oval-shaped device marked with the white Chinese characters for Taipei Icebar (Taipei Bing Guan) on a blue background, and a device thereupon with pictures of strawberry, pineapple, mango, and other fruits, and a semicircular device underneath with the blue Chinese-language characters for Mango Legend (Mang Guo Chuan Ci) on a white background; in addition, a registered trademark, "Super Mango Ice and Device," was used. The Chinese-language characters were designed by Taipei Icebar and used by each franchisee on their billboards or shop signs to represent their overall image as an ice products retailer. Upon overall observation, the indications in the above-mentioned designs were found to be obviously different from those in the Ice Monster shop sign, with its mark containing "ICE MONSTER Bing Guan" (Ice Monster Ice House) on a background of light blue or dark blue. Therefore, based upon an overall and objective judgment of market segregation factors such as the two parties' names, the symbols and representations used on their goods and services, and the classes of their goods and services, it was difficult to maintain that there would be a likelihood of confusion or misidentification by consumers as to the source of the two parties' goods and services. Since the Chinese-language Taipei Bing Guan was a distinctive name duly registered by Taipei Icebar in compliance with the Company Act, and since the typeface, device, and coloring in the representations on the shop signs, billboards, and advertising materials of the franchise shops were not an imitation of the design of the Ice Monster shop sign, meaning that they were not exceed the scope of ordinary use, and since Taipei Icebar did not engage in a deliberate act to create confusion among consumers as to the two parties' business operations, Taipei Icebar was found not to be in violation of Article 20 of the FTL.
3. Taipei Icebar already made good faith efforts to differentiate its business or service facilities or activities from those of Ice Monster in designing its trade dress comprising an oval-shaped device marked with the white Chinese characters Taipei Bing Guan on a blue background, a device with pictures of strawberry, pineapple, mango, and other fruits, and a semicircular device underneath with blue Chinese-language characters Mang Guo Chuan Ci on a white background, as well as its registered trademark "Super Mango Ice and Device." Besides, ice products sold by ice houses and coffee/tea shops were mostly made of seasonal fruits - e.g., mangos in summer and strawberries in winter. Therefore, it was difficult to maintain that the use of the duly registered corporate or business name Taipei Bing Guan as trade dress by Taipei Icebar and its franchise shops, and the marketing of a selection of mango ice products contradicted the principles of business ethics or obstructed effective competition, or that Taipei Icebar violated Article 24 of the FTL through a deliberate act of passing off Ice Monster's goodwill or exploiting others' fruits of labor.

Appendix:
Taipei Icebar International Co., Ltd.'s Uniform Invoice Number: 79989084

Summarized by Lai, Mei-Hua; Supervised by Yeh, Ning