Court Denies Mitsui Food & Beverage Enterprise Group’s Attempt to Secure Exclusive Rights Against the Trademark “ San Jing”
2011/03/08 TaiwanThe Court has ruled against Mitsui Group in their invalidation against the trademark “ 
San Jing” filed by Antico Corporation (: Mitsui (Japanese); San Jing (Mandarin)). The restaurant owned by Mitsui Group was a topic in the news due to the insider trading scandal of former president’s son-in-law Chien-Ming Chao. The Mitsui Group believes their trademark “ 
SANJING Japanese Restaurant” is a famous trademark, therefore, should be able to exclude other trademarks such as “
San Jing” to be registered.
In May of 2006, Antico Corporation filed a trademark application for “ San Jing”, designating leather goods such as wallet, bags, suitcases, etc. The Mitsui Group felt the trademark similar to their own would confuse the relevant consumers; therefore, Opposition and Invalidation were filed against Antico’s trademark registration. The Taiwan Intellectual Property Office (TIPO) ruled against Mitsui in both the Opposition and Invalidation, as the designated goods are very different of the two trademarks.
The Mitsui Group was dissatisfied with TIPO’s decision and filed an Appeal to the Intellectual Property Court, requesting the Court to invalidate Antico’s trademark. The Intellectual Property Court pointed out that the Chinese words “” are common words, therefore the trademark is an arbitrary mark with less distinctiveness than creative marks. Even though the two trademarks are similar, the Chinese words “” are not originally invented by Mitsui Group, and various trademarks using the same words have been allowed for registration in other classes. Furthermore, Antico Corporation designated their trademark for leather goods while Mitsui Group designated their trademark for food and beverage services. According to the general public, the nature, the function and the use of the designating goods are very different, the market segmentations are very distinct, and thus, the Court has maintained the decision of the TIPO, ruling against Mitsui Group in the Appeal.
Organized and translated by Jenny Yu
International Affairs
