經通國際智慧產權事務所

On January 21, 2010, after 11 years of litigations, the Supreme Administrative Court issued the final decision regarding the complaint of product name and package imitation filed by Hawley & Hazel Chemical Co. (H & H) against Galien Industrial Co. Ltd. (Galien). Based on the reason of that the consumers can differentiate H & H’s products from Galien’s products, the Supreme Administrative Court rejected the appeal filed by the Supreme Administrative Court.

The "Black Men Toothpaste" (transliteration from Chinese) manufactured by H & H has been a leading and famous brand in Taiwan for several decades. However, after "White Men Toothpaste" (transliteration from Chinese) manufactured by Galien was introduced to the market, substantial market share previously owned by H & H has been lost.

The said complaint was originally filed in 1997 by H & H with the Fair Trade Commission (FTC) alleging that the "White Men Toothpaste" (transliteration from Chinese) manufactured by Galien imitated the name and external appearance of the "Black Men Toothpaste" (transliteration from Chinese) manufactured by H & H in violation of the provisions of Articles 20 and 24 of the Fair Trade Law in force at that time. After conducting the related investigation, the FTC concluded that Galien’s products did not violate Articles 20 and 24 of the Fair Trade Law and rejected the complaint filed by H & H.

H & H then filed an administrative lawsuit with the Taipei High Administrative Court. After the examination, the Taipei High Administrative Court invalidated the said decision by the FTC and ordered the FTC to re-examine the case. However, the FTC maintained its original decision after its re-examination. Subsequently, H & H again filed an administrative lawsuit with the Taipei High Administrative Court, and this time, the Court ruled that Galien’s products imitated H & H’s products. Nevertheless, the FTC then filed an appeal with the Supreme Administrative Court. Due to different decisions issued by different court examinations together with several appeals, the said case continued to be passed between courts. Eventually, the official decision ruled against H & H, and the following appeal filed by H & H was rejected by the Supreme Administrative Court as the final decision.

During the said litigations, H & H submitted the evidence of reports produced by two market research companies demonstrating serious confusion of recognition among consumers, and some distribution channels also sent out leaflets indicating “White Men” is as good as “Black Men”. And H & H provided the argument of that Galien took advantage of H & H, and such actions constitute unfair competition.

However, the said final decision issued by the Supreme Administrative Court stated that the concepts, overall designs and devices of packages of "Black Men Toothpaste" and "White Men Toothpaste" are different. "Black Men Toothpaste" shows the diagram of a man’s head with a hat and "White Men Toothpaste" does not. The characters printed on the packages of the "White Men Toothpaste" are horizontal whereas those of the "Black Men Toothpaste" are vertical. Therefore, the Judge denied the existence of confusion of recognition among consumers. Furthermore, the said decision also indicates that a huge sum of advertising expenditure has been spent by Galien from 1989 to 1996, and the trademark bearing "White Men " (transliteration from Chinese) has also been registered by Galien for two decades with a certain level of fame. Thus, "Black Men Toothpaste" and "White Men Toothpaste" should not cause consumer’s confusion of recognition due to the relativity of product names. The said final decision issued by the Supreme Administrative Court was final without chance of further appeal.

Organized and translated by Louie Lin

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