IP Court: NuBra mark famous and distinctive enough to be protected from infringement
In regard to the matter that Hon Sung Chun Industrial Co., Ltd. (Chinese: 宏昇昌實業有限公司; hereinafter “Hon Sung Chun”) and Primaeval International Co., Ltd. (hereinafter “Primaeval”) used the words “NU BRA” and “NUBRA” on invisible bra products and sold them online, Taiwan IP Court ruled and determined that the two companies infringed upon Taiwan Nubra Co., Ltd.’s (hereinafter “Taiwan Nubra”) trademark rights, and that the two companies should pay to Taiwan Nubra TWD300,000 and TWD200,000, respectively, in damages. This judgment has become final.
Taiwan Nubra is the right holder of the NuBra drawing and the NuBra mark, both of which are designated for use on such products as bra, pyjamas, and bra cup and have been recognized as well-known trademarks after having been widely marketed and used for a long time. Hon Sung Chun and Primaeval, however, used the words “NU BRA” and “NUBRA” on invisible bra products for selling them online, by which use the two companies indeed constituted trademark infringement.
Hon Sung Chun alleged that the word “NuBra” is a general term referring to invisible bra, and they have made specific indication of “方妮Fani” as product source on the website. By so doing, Hong Sung Chun does not hold the intent to take a free ride on Taiwan NuBra’s NuBra mark and would not cause consumers confusion accordingly.
Primaeval made similar defensive argument that they used the “希蜜習兒” mark and “SYNNETRY” mark, and they did not use the word “NuBra” nor use it as a trademark, and also that the NuBra mark has become a code word for invisible bra products and is barely distinctive and therefore it is not a well-known trademark.
According to the IP Court judgment, the word “bra” of the NuBra drawing and the NuBra mark means “brassiere” which is related to the designated products of the NuBra mark. In addition, the search results of the word “nu” given by the online dictionary provided by Taiwan NuBra show that the word “nu” has 104 different meanings including “nude” among them, and that the word “nu” is not a commonly-known word; in that regard, consumers would have to get the message carried by the word “nu” by imagining, thinking, feeling, and inferring. Foregoing reasoning makes it reasonable to conclude that the NuBra drawing and the NuBra mark have inherent distinctiveness. By using the words “NU BRA” and “NUBRA” similar to the NuBra mark, Hon Sung Chun and Primaeval evidently intend to cause confusion and take a free ride on the NuBra mark. Thus, the IP Court let stand the occurrence of infringement alleged against the two companies and ordered that Hon Sung Chun and Primaeval should pay to Taiwan Nubra TWD300,000 and TWD200,000, respectively, in damages. This judgment has become final. (January 2017)