U.K. WOLSEY Trademark too Late for Name Rectification.

Disputes arising in connection with the renowned U.K. apparel brand “WOLSEY”.  The U.K. supplier believes that the English trademark – “WOLSEY” of Hua Yee Leather Products Co., Ltd. (“Hua Yee”), a Taiwan company, is identical with its brand and, therefore, initiates the administrative action claiming that Hua Yee’s trademark should be invalidated.

The U.K. WOLSEY brand was created in 1755.  The apparel brand under WOLSEY was released in 1897 and launched into the golf wear market.  In 1935 and 1959, it was awarded the Royal Warrant of Appointment and became the Royal knitwear supplier.

Hua Yee is a Taiwan company, which succeeded to the “Teh Chuan Chiun Yu and WOLSEY” trademark registered by another person and used such trademark on the goods including belt buckles, buttons and zippers.

In 2007, the Taiwanese agent of the U.K. WOLSEY, Cea Point Industrial Co. Ltd. (“Cea Point”), held that the trademark on Hua Yee’s leather products was identical with that used on the apparel distributed by it and Hua Yee was suspected of taking a free ride on its trademark.  Then, Cea petitioned with the Taiwan IPO for invalidation, but the petition was dismissed.

Further, Cea Point initiated an administrative action with the IP court, claiming that it, as the apparel supplier recognized by the Royal Britain, owned the long-standing trademark and 20 outlets in 20 countries in the world, and that Hua Yee’s trademark used on such accessories related to apparel as belt buckles and buttons was suspected of confusing consumers.

Hua Yee argued that its Chinese trademark consisted of the surnames of the responsible person and his wife, and English trademark consisted of WOLSEY and other English letters, and it had no intent to take a free ride on the “WOLSEY” trademark.

After examining the case, the IP court held that the U.K.-based supplier’s Taiwanese agent, Cea Point, failed to initiate an opposition action within the time prescribed under the Trademark Act and failed to prove that its trademark is commonly known by the public and, therefore, rendered the judgment against the renowned U.K. supplier.  (2010.11)

Source: IP Court docket number: (99) Xing-Shang-Su-Zi No. 115 [2010]
/DC