Court decision reversal for trademark infringement lawsuit of local well-known A-Sha Restaurant
E240503Y2 Aug. 2024(E288)
With respect to the trademark infringement case involving the family business of the well-known restaurant in Tainan, A Sha Restaurant, the IP&C Court ruled in the first instance proceedings that WU, Jian-Hao and other defendants did not commit infringement by marketing and promoting delivery goods and online shopping services under the names of “A-Sha” and “A-Sha Restaurant”. The court decision was reversed in the second instance proceedings to find WU, Jian-Hao and other defendants in breach of contract and order them to pay damages of TWD4.5 million. The court decision is appealable.
According to the second-instance court decision, the well-known A-Sha Restaurant was jointly run by the founder, WU Jin-Xia and her fifth brother, WU Shou-Chun (who is the chéf of both A-Sha Restaurant and the online store of A-Sha Restaurant). In April 2009, WU Jin-Xia, WU Rong-Can (the son of WU Jin-Xia’s second brother, WU Bing-Xiong), and WU Qing-Rong (daughter of WU Shou-Chun) negotiated and agreed upon the sale of real estate and also the following matters by a contract that (a) WU Jin-Xia should transfer the trademark rights of the “A-Sha” and “A-Sha Restaurant” marks to WU Qing-Rong and WU Rong-Can, either individually or jointly, (b) the right to run A Sha Restaurant should belong to WU Rong-Can, and right to its online store operation should belong to WU Qing-Rong. After that, WU Jin-Xia transferred the “A-Sha” and “A-Sha Restaurant” marks to WU Qing-Rong and WU Jian-Hao (son of WU Rong-Can) and others in the period between May and July 2010.
This trademark dispute was brought to the court after the death of the founder, WU Jin-Xia in 2020 when WU Qing-Rong found that WU Jian-Hao and others breached the contract by engaging in the online business of marketing and promoting delivery products and online shopping services by the name of “A Sha” and “A Sha Restaurant”, and even accepting media interviews. The court of the first instance did not sustain the alleged breach of contract but determined that another brand name, “Jinxialou” (transliteration of the brand name, “錦霞樓”) might cause consumers confusion and thus should constitute infringement, and ordered a damage payment of TWD500,000.
This case further moved to the second-instance proceedings upon both sides’ appeal. The court of the second instance adjudicated that WU Jian-How and other defendants (a) should be held in breach of contract, (b) without WU Qing-Rong’s prior consent, should not use, in their own names or in cooperation with others, the Chinese characters or English words identical or similar to “A-Sha” and “A-Sha Restaurant” in the manners of digital audio and video, electronic media, the Internet or any other methods similar to digital form or online media, for providing the services of advertising, TV shopping, online shopping, mail order, or online retailing, etc., and (c) should jointly and severally pay TWD4.5 million in damages. This second-instance court decision is appealable. (Released 2024.05.03)
/CCS