Unalis Corporation Defeated in Trademark Lawsuit against Sung Gang.

Unalis Corporation sued Sung Gang Asset Management Corp. Limited (“Sung Gang”) and Sung Gang’s subsidiaries over trademark infringement and sought an award of TWD3,360,000 in damages.  This lawsuit ended up in the defendants’ favor. [IP Court’s civil judgment under docket (101) Ming-Shang-Su No. 42 (2013.5.10)]

According to the IP Court’s civil judgment on this case, company name is for identifying the principal of a transaction from other companies and also for ensuring the identity between a party’s juristic acts in a transaction and its corresponding right and obligation, while trademark is mainly for representing the source of goods or services.  Company name and trademark are different in their meanings and functions and should not be a limitation on each other. 

Unalis Corporation has sold to Sung Gang’s former company, Kings Information Co., Ltd. (文魁公司; hereinafter “Kings Information)) its business of computer book publication and business software distribution since February 2002 and also authorized Kings Information to use it’s Chinese characters mark “松崗” (hereinafter the “subject mark”) on computer book and business software products.  With such authorization, it is reasonable and legal that Sung Gang uses the subject mark on computer book and business software products or that any products and services under the subject mark should be free from Unalis Corporation’s trademark right for the subject mark.  That is, Sung Gang’s use of the subject mark both as a “trademark” and as a specific part of its company name does not constitute trademark infringement.

In regard to violation of the 2nd subparagraph, 1st paragraph of Article 20 of the Fair Trade Act charged against Sung Gang by Unalis Corporation, the IP Court did not sustain such allegation on the ground that Unalis Corporation has authorized Kings Information to use the subject mark on computer book and business software products and further run its own business of computer game products under the subject mark “松崗”.  By doing so, Unalis Corporation has, on its own initiative, separated and differentiated the businesses of “computer books publication and business software distribution” and “computer game”.  Therefore, it is groundless to establish the occurrence of unfair competition existing between Unalis Corporation and Sung Gang in two markets as alleged by Unalis Corporation. 

Due to Unalis Corporation’s failure to substantiate that the subject two Chinese characters “松崗” is a commonly and well known company name or trademark and that Sung Gang’s use the subject two Chinese characters “松崗” as a company name indeed causes consumers confusion, IP Court held Unalis Corporation’s requests for Sung Gang’s cease in using the subject mark and damages payment to be meritless and denied the requests accordingly.  (2013.05)
/CCS