經通國際智慧產權事務所

Royal Grammy Company, a Taiwanese music instrument supplier, had registered the word “GRAMMY” as the trademark for selling instruments twelve years ago. Host of the Grammy Awards, The Recording Academy, filed an appeal overseas against the decision. As a result, the “GRAMMY” trademark of Royal Grammy Company was ordered to be invalided, and Royal Grammy Company initiated an administrative litigation. However, the IP Court considered “GRAMMY” was a world-wide famous trademark and still ruled against Royal Grammy Company.

Located in Yunlin County, Taiwan, Royal Grammy Company specializes in selling pianos and drum kits. It registered “GRAMMY” as the trademark twelve years ago, and the two “M” letters in the trademark was designed into a crown device.

The owner of company, Bing-Sen, Tsai, claimed that Grammy Awards was the ceremony of music and recording, which was different to his service of selling music instruments. He also thought it was too sweeping to withdraw the trademark registration because it was related to music. Taiwanese only know the Chinese of the Grammy Awards, but they do not know the word “GRAMMY” or its host, meaning this word could not stand for any goods or services and was not a famous trademark.

After the investigation, the judge considered the word “GRAMMY” could be clearly identified despite the Royal Grammy Company designed the two “M” letters into a crown device. The judge also indicated the company intentionally used the word “GRAMMY” in spite of the fact that the Grammy Awards was well-known throughout the music world. Royal Grammy Company intended to take advantage of Grammy Award, which might confuse the public and dilute the distinctiveness of the Grammy Awards. According to item (12), paragraph 1 of Article 23 of the Trademark Act, the judgment ruled against Royal Grammy Company, and its trademark must be withdrawn. The decision was issued by the IP Court on August 4, 2011.

Organized and translated by Akina Pan

International Affairs