經通國際智慧產權事務所

Three Stripe Trademark Battle  V.S. in Taiwan:
 

The three stripes trademark battle between two well-known sports wear companies, Adidas from Germany versus Lutong Enterprise Corporation (the proprietor of JUMP) from Taiwan, has lasted for years through administrative proceedings around the world. Nevertheless, the Taipei High Administrative Court ruled a cancellation against Adidas’ “three graduated stripes” registered trademark on grounds of JUMP’s prior registration in Taiwan in May 2008.

Adidas stated their first use of the “three stripes logo” as their trademark internationally about 30 to 40 years ago, whereas JUMP has obtained their trademark registration with their designed “three graduated stripes logo” 24 years ago in 1983 in Taiwan. JUMP argued that Adidas’ trademark logo was originally three stripes with same length and later filed trademark registration for their logo with three stripes in different lengths in 1996 in Taiwan, which was after JUMP’s use of their jumping-style logo with “three graduated stripes” as their trademark in 1989 in Germany.

JUMP further stressed that they were accused of trademark infringements by Adidas in Turkey, China and twenty more countries since they were planning to expand their market in Europe in 1989.

In 2003, JUMP finally initiated their actions against Adidas in Taiwan and requested the Ministry of Economic Affairs to cancel Adidas’ “three graduated stripes” registered trademark, based on the similarities between these two marks. The Intellectual Property Office agreed and ruled a cancellation against Adidas’ “three graduated stripes” registered trademark. Adidas, on the contrary, filed a lawsuit to request the Ministry of Economic Affairs in Taiwan to override the trademark cancellation and later lost the trial in 2006. After filing another appeal, the Supreme Administrative Court agreed with Adidas’ account and remanded the case to the Taipei High Administrative Court for reinvestigation in April 2008.

The Intellectual Property Office in the Board of Trade states that there are local agents trying to copy the foreign trademarks or vie for first trademark registrations in general cases in Taiwan, yet, it cannot be certain whether or not JUMP’s “bad-faith” of trademark invasion since their use of the mark for years as well as their registration 13 years prior to Adidas’ in Taiwan.

The Chief of Intellectual Property Office explains that both parties have obtained their “three stripes trademark” registrations and coexisted for a long time in Taiwan. The reason for JUMP’s recent actions against Adidas’ was due to Adidas accusations of JUMP’s trademark infringements in foreign countries in the past years.

Adidas’ lost in this trademark administrative proceeding is to remain the previous decision ruled by the Intellectual Property Office in the Ministry of Economic Affairs regarding Adidas’ exclusive rights of using the “three graduated stripes logo” on their shoes products, yet, Adidas can still use the logo legally before the decision is final.

On the other hand, JUMP as another “three graduated stripes” trademark owner can further file a Civil Action lawsuit against Adidas for compensations and to request Adidas can no longer use the logo on the grounds of trademark infringement before the administrative proceeding is over. During this stage, the District Court will suspend the proceeding of the Civil Action lawsuit until the validity of Adidas’ trademark rights is clarified by the Taipei High Administrative Court.

At any rate, the battle won’t cease before a final decision is certain, since Adidas can still file another appeal against the decision. An alternative solution is for both parties to compromise with each other so that Adidas can choose to coexist with JUMP, abandon the trademark use of “three graduated stripes” logo in Taiwan, and or merge the two companies. Another alternative is that Adidas can use other trademarks, such as the “three leaves logo” if the Court finds it unfavorable in this trademark battle and cancels its rights of using the “three graduated stripes logo”.

By Jenny Yu

International Affairs