經通國際智慧產權事務所

(The mark on the left is owned by Yuan Heng Inc. while the mark on the left is owned by Mr. Chen.)

Yuan Heng Inc. (Yuan Heng), the owner of the well-known “Sun Flower” socks, considers that the mark “San Tree” registered by an individual (Mr. Chen) from Zhanghua being confusingly similar to its mark “Sun Flower”. In addition, the actual use of Mr. Chen’s mark is different from the mark as registered. Yuan Heng, therefore, attempted to have Mr. Chen’s mark revoked by filing a non-use cancellation with the Taiwan Intellectual Property Office (TIPO), followed by an appeal with the Ministry of Economic Affairs (MOEA) against the unfavorable decision issued by the TIPO. After numerous defeats, Yuan Heng filed an administrative lawsuit with the Intellectual Property Court (IPC), wishing to receive a favorable decision from the IPC. However, the IPC held that even thought Mr. Chen’s mark only shows the mark “St” on the socks, the overall product still shows other distinctive element, such as “San Tree” and so forth. Therefore, the IPC believes that Mr. Chen’s mark will not cause any confusion, and decides the case in favor of Mr. Chen.

Various consumers on the Internet forum have shared their experiences of how they mistakenly thought that the products they had purchased were of SUN FLOWER when, in fact, the products were from SAN TREE. Yuan Heng’s market research also revealed that the socks produced by Mr. Chen only show the mark “St” instead of “St SAN TREE”; consequently, Yuan Heng had filed with the TIPO a non-use cancellation against the mark owned by Mr. Chen. The said filing, however, was rejected by the TIPO.

After numerous defeats, Yuan Heng filed an administrative lawsuit with the IPC, arguing that the mark registered by Mr. Chen contains three elements, namely “SAN TREE” in Chinese characters, “SAN TREE” and “Sf-device”. On the actual products, however, only the “Sf-device” is included.

Yuan Heng also argues that its mark “Sf” has been registered prior to Mr. Chen’s mark “St”; its mark has also been well-known to general consumers in Taiwan. Since the actual use of the mark on Mr. Chen’s products is different from the mark as registered, and given the fact that Mr. Chen’s use of the mark “St” has caused confusion to the general consumers, Mr. Chen’s mark should be revoked according to Article 57(I)(1) of the Taiwan Trademark Act.

The IPC however, comments that Yuan Heng’s mark is “Sf” while Mr. Chen’s mark is “St”. Even though both marks start with the English letter “S”, the second letter as shown in both marks shows significant difference. The general consumers, therefore, will not be confused with the sources of different goods.

The IPC further mentions that even though the socks produced by Mr. Chen only bear the mark “St”, the product packaging, as well as the product tag, all include either “SAN TREE” in Chinese characters or “SAN TREE”. Since the general consumers will habitually check the product tag before purchasing the goods, the IPC believes that the general consumers will not be confused with the sources of different goods. The case is, therefore, decided in favor of Mr. Chen.

Organized and translated by Jenny Yu

International Affairs