Vitalon Wins the Trademark Battle with Standard Foods for the Chinese Characters Mark “御茶”.

Vitalon Foods Company (Vitalon) sued Standard Foods Corporation (“Standard Foods”) for trademark infringement because the designation of Standard Foods’ product, “Royal Tea Brew” soy sauce in Chinese characters “御茶釀” includes two Chinese characters “御茶” of Vitalon’s registered Chinese characters mark “御茶園” designated to be used on Vitalon’s tea beverage products.  Vitalon alleged that Standard Foods’ use of the two Chinese characters “御茶” would mislead  consumers with respect to the source of two products in dispute. Intellectual Property Court later decided in Vitalon’s favor and ordered Standard Foods’ cease in using the two Chinese characters “御茶” as part of its product designation. [Taiwan IP Court civil judgment of case (101) Min-Shang-Su-Zi No. 29 (26 February 2013)]

Vitalon makes and sells the well-known tea beverage products in dispute under the designation of “Royal Tea Garden” in Chinese characters “御茶園” and has also completed registration of the Chinese characters mark since 2001.  Its tea beverage products under the designation of “Royal Tea Garden” in Chinese characters “御茶園” had also been ranked 2nd among tea beverage category in 2006 and 2007, according to the ideal brands survey released by Management Magazine Volume 391.  On ther other hand, Standard Foods’ soy sauce product under the designation of “Royal Tea Brew” in Chinese characters “御茶釀” is also the top one among soy sauce products in Taiwan. Standard Foods has also registered the Chinese characters “御茶釀” as trademark in 2006 and promoted and marketed the said product with its “Great Day” series products.

This trademark battle between Vitalon and Standard Foods has been lasting for several years.  Vitalon, which outflanked Standard Foods in registering the "Royal Tea Garden" in Chinese characters mark “御茶園”, opposed against TIPO’s approval of Standard Foods’ application for the proposed mark “御茶釀”, which ended up in Vitalon’s favor after TIPO’s deliberation on the ground of the likelihood of trademark confusion and TIPO later cancelled the registration of Standard Foods’ registration for the Chinese characters mark “御茶釀”.  Trying to defend its trademark registration, Standard Foods filed an administrative lawsuit to the IP Court after its failure in the administrative appeal.  The IP Court eventually found Standard Foods’ claims groundless by confirming the likelihood of confusion between the two marks in dispute. With its success in the opposition against Standard Foods’ trademark registration, Vitalon therefore initiated a civil lawsuit alleging Standard Food’s infringement of trademark.

In the trial proceedings, Standard Foods claimed that the two products in dispute have different groups of consumers and therefore consumers confusion will not occur, which was negated by the IP Court by the holding  Court  that tea beverage and soy sauce are closely related with overlapped groups of consumers.  That was why IP Court decided in favor of Vitalon.

Vitalon asserted that the high similarity between the two marks in dispute will cause consumers to mistakenly believe that the two products in dispute are distributed under the same series of trademarks. Standard Foods negated the alleged high similarity by claiming that the last Chinese character of the two marks in dispute, “釀” and “園” (“brew” and “garden” in English)  look totally different in appearance and that the soy sauce and tea are completely different commodities in consideration of the ways of use and the needs in everyday life.  (2013.03)