Taiwan Kaiser wins the trademark lawsuit filed by Hershey
E170930Y2 | Nov. 2017（E216）
The Hershey Company (“Hershey”) filed a suit against Taiwan Kaiser Foods Industrial Co., Ltd. (“Taiwan Kaiser”), alleging that Taiwan Kaiser infringed upon its HERSHEY’s mark and also its trademarked teardrop-shaped design by Taiwan Kaiser’s Kaiser’s chocolate products. The Taiwan IP Court decided on this case against Hershey by negating the alleged similarity between the HERSHEY’s mark and Taiwan Kaiser’s KAISER’S mark and KAISER mark. This case is appealable.
Hershey proved the high distinctiveness of their trademarked teardrop shape by indicating that 70% of the pictures displayed in the first page of Google’s search results, if searched by the keyword, teardrop chocolate, are those of Hershey’s Kisses chocolate product. Moreover, Hershey pointed out that Taiwan Kaiser caused consumers confusion by printing the device of a teardrop-shaped chocolate on its product packaging as a symbol, making the letter K of KAISER’S similar to letter H, and also by intentionally adding ‘s of KAISER’S as its suffix.
Taiwan Kaiser made their arguments that they have trademarked the KAISER’S mark and KAISER mark since 1977, and that the letter K of the two marks is in printed form distinguishable and different from letter H, and also that the English pronunciation and letter arrangement of the two marks are both different from Hershey’s HERSHEY’s mark. Moreover, Taiwan Kaiser added that the ‘s is not a significant basis for consumers to identify different trademarks and the teardrop shape is commonly used for chocolate products, and also that Hershey has not obtained the 3-dimentional trademark registration for the HERSHEY’s mark both in Taiwan and the US. Based on the foregoing assertions, Taiwan Kaiser refuted the alleged trademark infringement allegation.
The IP Court overruled the alleged similarity between the HERSHEY’s mark and Taiwan Kaiser’s KAISER’S mark and KAISER mark on the grounds that ‘s is a non-distinctive and common possessive expression in English and that the HERSHEY’s mark and Taiwan Kaiser’s KAISER’S mark and KAISER mark are different in letter combination, pronunciation, concept, and color scheme. Moreover, the alleged consumers confusion was also negated by the IP Court by the reasoning that consumers are familiar with the KAISER’S mark and KAISER mark to a certain extent after Taiwan Kaiser’s KAISER’S products have been marketed and sold for several decades and the registrations of KAISER’S mark and KAISER mark are both earlier than that of the HERSHEY’S mark. Based on the foregoing, the IP Court dismissed Hershey’s complaint accordingly. (September 2017)