經通國際智慧產權事務所

Tseng Ji, a well-known traditional pounded rice-cake (mochi) shop in Hualian city, first filed the Chinese trademark application bearing “ (transliteration in English: Tseng Fu Ji)” in January 2006 with the designated goods of rice cakes and other relevant goods under class 30. The application was accepted for registration but was cancelled later on due to the opposition filed by another party, Tseng Fu Ji. The subsequent appeal and administrative proceedings to the Taipei High Court filed by Tseng Ji were also rejected.

Tseng Ji argued that the purpose for filing the application bearing “ (transliteration in English: Tseng Fu Ji)” was to broaden the protection of their original well-known trademark “Tseng Ji”. To prove accordingly, they provided relevant evidences in connection with their continuous and profound use of the trademark “Tseng Ji” to the Taipei High Court.

On the contrary, Tseng Fu Ji declared that they are the prior user of the mark “Tseng Fu Ji” by demonstrating the evidence to the Taipei High Court with their business registration under the name of “Tseng Fu Ji” to the district government in the year of 2004, as well as their use of the mark on the signboards, advertisements, etc. since 2004 to 2006. Furthermore, Tseng Fu Ji even proved the fact that Tseng Ji filed the trademark application “Tseng Fu Ji” after having the actual knowledge of their trademark, and which is in violation of the Taiwan Trademark Act, Article, 23(1)14.
 

Following to the points below, the Taipei High Court ruled unfavorable decision against Tseng Ji:

The similarities of the marks “” and “”: Except for the insignificant differences of the size and font of the first Chinese character “Tseng” and the additional device attached with the trademark filed by Tseng Fu Ji, both marks are in fact similar to each other,

The acknowledge of existence of the mark bearing “Tseng Fu Ji” before filing: This point could be well verified according to a previous warning letter mailed by Tseng Ji to Tseng Fu Ji, requesting them to stop using the mark and mailing date of was prior to the filing date of the application.
 

Organized and translated by Jenny Yu

International Affairs