經通國際智慧產權事務所

On June 18th, 2009, the Supreme Administrative Court has ruled to maintain the verdict of the Intellectual Property Court against Sany Automobile Group’s trademark “SANY & device” . As Sany Automobile Group’s “SANY & device” mark is similar to the Daimler AG’s registered “BENZ device” mark, the Taiwan Intellectual Property Office did not allow its registration in Taiwan. This is the first time in Taiwan’s judicial history that an automobile manufacturer from China has come to Taiwan for their trademark right.

Daimler AG has filed a request for Cancellation to the Intellectual Property Office against the trademark “SANY & device”. In the end of the prosecution, the Supreme Administrative Court has ruled against the appeal filed by the Sany Automobile Group, which increased the difficulties for the Automobile Group to sell their products in Taiwan.

After the Intellectual Property Office has made its decision in favor of Daimler AG in Cancellation, Sany Automobile Group filed an appeal right away against the decision to the Intellectual Property Court. On March 5th, 2009, the Intellectual Property Court has also ruled in favor of Daimler AG, which prompts Sany to file another Appeal to the Supreme Administrative Court in hope to protect their trademark right. In less than 4 months, the Supreme Administrative Court has made its ruling, the efficiency of the Trial has amazed the Industries in Taiwan and China.

The Intellectual Property Court believes that the two trademarks both consist of a device with three-pointed star or combination of a circle with three-pointed star, wherein the device is not a common known design and has no association with the shape of the designated goods. Although the additional foreign language in the opposed mark “SANY & device” has different pronunciation and idea than the opposing mark “MERCEDES”, “BENZ”, the device of the opposed mark is very similar to the opposing mark and the designated goods are all car related goods; thus, there is the possibility for the consumers to mistaken the origin of the goods are from the same maker. Furthermore, from the evidence provided, it is clear that the opposing party has been widely using its trademark for a substantial long period of time, while the opposed party has yet widely use their mark; thus, it is difficult to conclude the two trademarks have co-existed in Taiwan. Although the two trademarks have been ruled as not similar in many other countries by their Intellectual Property Offices or Courts, as the protection of the trademark is territorial, the use of the opposed mark is not consistent through out all the countries; thus, the decision by other Intellectual Property Offices/Courts cannot be used as evidence.

As a result, Sany Automobile Group’s trademark “SANY” remains cancelled.

Organized and translated by Eunice Yang

International Affairs