“黃飛紅” is a trademark coined by a China-based food manufacturing company and has been put to extensive and long-term use in China in respect of “spicy peanuts” since its coinage. Apart from establishing a high reputation in China, the trademark secured a registration in Taiwan on “peanuts” in as early as 2009 under the name of the legal representative of the company.
In 2013, two trademarks similar to “黃飛紅” (i.e. “黃粒紅” and “黃粒紅 & Device”) were registered in respect to “peanuts”, among others, in Taiwan under the name of Yong Jade Trading Co. Ltd. (hereinafter referred to as “Yong Jade”) In an attempt to cancel registration of these two similar trademarks, the owner of “黃飛紅” filed opposition actions thereagainst based on their prior registered mark “黃飛紅” and the reputation of the mark.
As a counter-measure, Yong Jade filed a non-use cancellation action against the registered “黃飛紅” mark. Taking into account that all materials submitted to prove use of “黃飛紅” were established in China, Taiwan’s IP Office (hereinafter referred to as the “TIPO”) canceled registration of “黃飛紅” on grounds of non-use in Taiwan.
Notwithstanding the above, the TIPO recognized “黃飛紅” as a well-known mark and deemed the Opposition Actions filed respectively against “黃粒紅” and “黃粒紅 & Device” to be well-grounded.
Not being satisfied with the Opposition Decisions rendered by the TIPO, Yong Jade filed Appeals with the Board of Appeals. After the appeals were dismissed, Yong Jade, in turn, filed petitions for Administrative Litigation with the IP Court. It was argued that the mark “黃飛紅” is not readily known to local consumers since “黃飛紅” branded spicy peanuts had never been imported to Taiwan due to food/agriculture import control, as clearly stated in the final and irrevocable Decision rendered in the non-use cancellation action filed against “黃飛紅”.
The IP Court upheld the Opposition Decisions rendered by the TIPO. It opined that, in the evaluation of the reputation of a mark, use of the mark is not limited to the territory of Taiwan. Even though there were no sales or marketing activities launched for “黃飛紅” branded spicy peanuts in Taiwan, in view of the frequent cross-strait exchanges between Taiwan and China, it can be assumed that the high reputation established in “黃飛紅” in China on those spicy peanut products had already spilled over into Taiwan. On this score, the mark “黃飛紅” should be accorded “well-known mark” protection in Taiwan.
The results of this trademark dispute suggest that, Taiwan’s IP Court is apt to strengthen the protection of unregistered, well-known marks in Taiwan such that a trademark not registered in Taiwan but is reputed abroad can bar registration of an identical or similar mark. Further, so long as a mark has been used abroad to the extent of establishing a high reputation, and there is sufficient evidence proving local consumers’ awareness of the mark by way of, e.g., cross-border shopping, websites browsing, media reports accessing, the mark should be protected in Taiwan as a well-known mark.
Brand owners are thus highly recommended to preserve all use materials, where possible, since they may be pivotal in proving the well-known status of their marks in Taiwan.
