The trademark in dispute
A trademark “花太郎” (transliteration: Hua-Tai-Lang. A Japanese name)” designating the services of “restaurants” was allowed for registration inTaiwan. The complainant filed an opposition against the above trademark during its publication period according to the old Trademark Act, Article 23.1(14) by the reason that the complainant has used “花太郎” as a trademark earlier than the filing date of the “花太郎” trademark registration.
The defendant (the TIPO) and the participant (the registrant) argued that “花太郎” used by the complainant was a name of an advertising character for promoting the complainant’s products, but not a trademark. What the consumers recognized was the complainant’s well-known trademark “黑松”. The main arguments in this legal case were:
1. if the complainant’s use of the term “花太郎” complied with the requisites of the use of a trademark,
2. if the “花太郎” trademark registered by the participant (the registrant) violated the old Trademark Act, Article 23.1(14) and should be invalidated.
The use of a trademark means “the utilization for marketing purpose of trademark on goods, services or relevant articles thereof, or the utilization through means of two-dimensional graphic, audio and visual digitization, electronic media, or other mediums to sufficiently make relevant consumers recognize it as a trademark.” as regulated in the old Trademark Act, Article 6. So, the requisites of the use of a trademark are:
- The user should have the subjective intention of using the trademark in the course of trade. The “trade” means commercial transactions in the market. The territory of sales includes domestic and exporting markets.
- There should be an active action in displaying the trademark by the user.
- The display of such trademark should be capable of being recognized by relevant consumers as a trademark.
The Judge analyzed whether the complainant’s use of the term “花太郎” complied with the requisites of the use of a trademark as follows:
- The complainant’s trademark displayed on the product was “黑松”: According to the web pages provided by the complainant, they were advertisements about the introduction and promotion of various “黑松” trademarks, but not of the “花太郎” mark. Furthermore, the big amount of the advertising expenses was for promoting the products bearing “黑松” mark instead of “花太郎” mark. So, “花太郎” used by the complainant was not capable of being recognized by relevant consumers as an indication of the source of goods.
- “花太郎” was a name of an advertising character for promoting the complainant’s products:
From the various advertisements provided by the complainant, they were evident that “花太郎” was a name of a fictitious character, an ex-Japanese sumo wrestler, in a series of advertisements, for promoting the complainant’s products. According to the consumers recognition, “花太郎” was only a character in the advertisement, but not an indication of the source of goods. So, the evidence provided by the complainant could only prove that the consumers recognized “黑松” as the complainant’s trademark of the products, but “花太郎” was merely a name of the advertising character. “花太郎” was not used as a trademark.
Since the complainant’s use of “花太郎” did not comply with the requisites of the use of a trademark and the participant (the registrant) did not have specific relationship with the complainant to know the complainant’s “花太郎” prior to filing their “花太郎” mark, the “花 太郎” mark registered by the participant (the registrant) did not violate the old Trademark Act, Article.23.1(14).
JAW-HWA INTERNATIONAL PATENT & TRADEMARK & LAW OFFICES
10-1FL., NO.23, SEC.1, CHANG-AN E. RD.,TAIPEI10441,TAIWAN, R.O.C
http://www.jaw-hwa.com.tw E-mail: wt.moc.awh-waj@awhwaj
Source: TIPO Newsletter issued on July 5, 2012; the administrative decision No. 10 in the IP Court in 2012
http://www.tipo.gov.tw/ch/News_NewsContent.aspx?NewsID=6091
