經通國際智慧產權事務所

The Taiwanese agent of the famous French bakery “PAUL” sued Yuen Foong Paper Company for infringing Paul’s trademark rights, as Yuen Foong used PAUL’s paper bags in clothing sales without its permission. Taipei District Court judged that Yuen Foong Paper Company did not cause confusion to the relevant consumers and ruled against Paul bakery.

According to the verdict, the agent of PAUL claimed that it requested the printing house to print PAUL’s trademark on paper bags. There were about 8250 pieces of defective paper bags, and the printing house asked Yuen Foong Paper Company, its downstream company, to destroy the defectives. However, Yuen Foon gave these bags to the dealer who was holding clothing sales without notifying PAUL. Therefore, PAUL argued that Yuen Foong Paper Company and the clothing dealer infringed PAUL’s trademark rights and sought compensation for NTD 60, 0000.

Yuen Foong Paper Company explained the reason it gave flawed paper bags to the clothing dealer without charge was to avoid wasting. Moreover, there were hundreds of trademark registrations contain the word “PAUL” in Taiwan. Consumers hardly thought about breads or bakery immediately when they saw the mark “PAUL” in clothing sales, and they would not misidentify the sources of the goods.

The judge deemed that acquiring PAUL’s paper bags in clothing sales will not make consumers unwilling to purchase in PAUL bakery. Furthermore, there is a plenty of trademark registrations contain the word “PAUL”. There exists no likelihood of confusion to relevant consumers.

Based on these reason, the Court ruled in favor of defendant, Yuen Foong Paper Company on July 19, 2010. The complainant is entitled to appeal.

Organized and translated by James Tsai

International Affairs