Local company receives prison sentence for infringing the three character mark “別蚊我”

Shin Lai International Industry Limited Company (Chinese: 新錸國際實業有限公司; hereinafter “Shin Lai”) has sold mosquito trap products under the Chinese product name, “ “新錸家居” 別蚊我—無線滅蚊神器” (hereinafter the “product name in dispute”) on TV shopping channels and online shop websites since April 2016.  US Baby (Taiwan) Co., Ltd. (hereinafter “US Baby Taiwan”), the holder of the registered three-character mark “別蚊我”, brought this matter to the New Taipei District Prosecutors Office on the ground that the product name in dispute would cause consumers’ confusion and form a mistaken belief that the product sold under the product name in dispute is manufactured and sold by US Baby Taiwan.  US Baby Taiwan further successfully had the responsible person of Shin Lai indicted.  New Taipei District Court sentenced the responsible person of Shin Lai to 5-month imprisonment for trademark infringement, which may be commuted to a fine payment in an amount of TWD150,000.  This case is appealable.  

US Baby Taiwan stated that its registered mark “別蚊我” is original and unique due to the following reasons.  The registered mark “別蚊我” consists of three Chinese characters and the pronunciation thereof carries a meaning “Do not kiss me”, because the second Chinese character thereof, “蚊” (meaning “mosquito”) has the same pronunciation with that of another Chinese character, “吻” (meaning “kiss”), and the word replacement of “吻” with “蚊” successfully makes the mark as a whole have high distinctiveness.  Moreover, as the product name in dispute is used for mosquito trap products which are similar to the designated products of the registered mark, namely mosquito repellent patch and anti-mosquito medicament products, US Baby Taiwan, after sighted Shin Lai’s use of the product name in dispute in May 2016, immediately requested Shin Lai to stop using the product name in dispute on shopping platforms that is similar to its registered mark “別蚊我”.   

The responsible person of Shin Lai, Zhan, alleged that what they sells are mosquito trap products which are absent from the list of the designated products of US Baby Taiwan’s registered mark.  He also defended himself by arguing that the products of Shin Lai are sold under their own trademarks and the combination of the three Chinese characters, “別蚊我” (literally meaning “no mosquito bites”) as part of the product name in dispute is not used as a trademark, but an indication and description of the function of such mosquito trap products.  In one word, it is a bona fide use.  

According to the reasoning of the New Taipei District Court judgment, US Baby Taiwan has used its “別蚊我” mark for its herbal mosquito repellent spray products and has also spent millions in advertisements and in celebrity spokesperson endorsement as promotion since its registration in 2012 and 2013.  Due to the foregoing efforts, the mark has acquired inherent distinctiveness and has been commonly and widely recognized by consumers.  

However, Shin Lai, for promoting its mosquito trap products on shopping platform, uses and includes the three Chinese characters “別蚊我” as a conspicuous part of its product name in dispute and causes them to stand out among the other words of the product name in dispute by leaving space or adding punctuation before or after it.  Such word arrangement is able to cause consumers to see the three Chinese characters together as a mark identical to US Baby Taiwan’s “別蚊我” mark.  In this regard, it is reasonable to sustain the likelihood of Shin Lai’s taking a free ride on the high reputation of US Baby Taiwan’s “別蚊我” mark, and therefore, the responsible person of Shin Lai is imposed with 5-month jail sentence, which may be commuted to a fine payment of TWD150,000.  This case is appealable.  (January 2017)  

/CCS