經通國際智慧產權事務所

Popsmile, the manufacturer of various flavored popcorn and the number 1 choice for popcorn group buy in Taiwan, was sued by “Mogoo Handmade Popcorn” for trademark infringement. After the investigation by Banciao District Prosecutors Office, it was determined that the phrase, “Mushroom Series Popcorn”, was used by Popsmile to describe the shape of a popped popcorn rather than as its trademark. Such a use did not constitute infringement, and therefore, the case was dismissed and the official decision was issued on Oct. 15, 2010.

Popsmile was founded in 2006 with its headquarter located in Sanchong, Taipei County. Popcorns manufactured by Popsmile are extremely popular for group buy. Such popularity may be statistically proven with more than 300,000 online discussion records and a total of more than 7 million buckets sold throughout Taiwan. In addition, Popsmile has also signed endorsement contracts with celebrities to promote its popcorns and started having its products distributed via various hypermarkets and superstores in Taiwan.

Mogoo Handmade Popcorn was founded in Kaohsiung by Mr. Dahua WANG with its mushroom type popcorn kernels imported from the US. Since the shape of a popped popcorn mimics that of a mushroom, “Mogoo” decided to use the characters, “”, as its brand and trademark. (Note: “Mogoo” is transliteral of “”. The pronunciation of “” is identical to “mushroom” in Chinese; the Chinese characters are similar to the literal translation of “mushroom”, too.) “Mogoo” now has close to 20 retail stores throughout Taiwan.

While browsing Popsmile’s website, Mr. WANG thought that the “Mushroom Series Popcorn” sold by Popsmile contained the Chinese characters of , which are confusingly similar to Mogoo’s trademark, “”, which was registered by Mr. Wang in February 2010. Since Popsmile started to distribute the “Mushroom Series Popcorn” in June, Mr. WANG decided to sue Popsmile for infringing its trademark right.

The founder of Popsmile, on the otherhand, explained that the Chinese characters of “” were used to described the shape of a popped popcorn; they were never intended to be used a Popsmile’s trademark.

After the prosecutor’s investigation, it was noted that Popsmile owned two trademarks, namely “” (or “Popsmile square” in English) and “Pop-smile”. In addition, according to the catalogue form the US popcorn kernel distributor, there are, indeed, two types of popcorn kernels – “butterfly” and “mushroom”. Consequently, after appraisal by Taiwan Intellectual Property Office, it was determined that the Popsmile’s use of the phrase “mushroom series popcorn” did not constitute infringement. The case was, therefore, dismissed.

Organized and translated by James Tsai

International Affairs