Jih Sun Securities Co., Ltd. Lost the Case Against Jih Sun Securities Investment Trust Co., Ltd over Trademark Infringement

Jih Sun Securities Co., Ltd. (“Jih Sun Securities”) filed a complaint against Jih Sun Securities Investment Trust Co., Ltd. (“Jih Sun Securities Investment Trust”) alleging trademark infringement and demanded the latter to change corporate name.  The Taiwan IP Court has determined that Jih Sun Securities Investment Trust does not violate the laws and does not have to change their corporate name based on the finding that Jih Sun Securities has given their “implied consent” to Jih Sun Securities Investment Trust’s use of the two Chinese characters “日盛” as part of their corporate name. 

According to Jih Sun Securities’ allegations, it has been over 50 years since Jih Sun Securities was established in 1961.  Jih Sun Securities is a famous security dealer whose business scale had once reached ten billions in 1980 and has successfully registered their two Chinese characters mark “日盛” since 1988.  Neither an affiliate company nor part of the parent company, Jih Sun Financial Holding Co., Ltd., Jih Sun Securities Investment Trust has been using the two Chinese characters mark “日盛” as part of their corporate name and thus caused a confusion on the public that they are a subsidiary of Jih Sun Securities.  Besides, the two companies’ business cooperation does not equal to Jih Sun Securities’ permission or implied consent to Jih Sun Securities Investment Trust’s use of the two Chinese characters mark “日盛”.  Therefore, Jih Sun Securities asserted trademark infringement against Jih Sun Securities Investment Trust.

On the other hand, Jih Sun Securities Investment Trust indicated that the two companies have the same origin, and the general manager of Jih Sun Securities in 1996, when Jih Sun Securities Investment Trust was to be established, urged for in their internal notice the full support for the latter’s establishment.  Jih Sun Securities Investment Trust had also sold many financial products on commission.  Moreover, in 2006, Jih Sun Securities issued a letter demanding that Jih Sun Securities Investment Trust and other nine subsidiaries under the same group to share operating expenses incurred to the group.  Also, Jih Sun Securities has for a long period of time named Jih Sun Securities Investment Trust as a subsidiary in their promotional literature.  The foregoing substantiates that Jih Sun Securities agreed to Jih Sun Securities Investment Trust’s use of the two Chinese characters mark “日盛” as a corporate name.  To emphasize their relationship with Jih Sun Securities, Jih Sun Securities Investment Trust also asserted that during their operation for more than 17 years, they have been enhancing the fame of Jih Sun Securities and raising capital in a total amount of over ten billions and thus securing Jih Sun Securities handling charges of several tens of millions.  That is to say, the “日盛” mark has achieved fame as a result of the two companies’ efforts.  Thus, it is against the bona fide principle to request Jih Sun Securities Investment Trust to change their corporate name just because of change of shareholding structure inside Jih Sun Securities. 

The Taiwan IP Court rendered a judgment on this case.  According to the finding and reasoning provided in the judgment, Jih Sun Securities had once provided full support as shown in their internal notice for the establishment of Jih Sun Securities Investment Trust and there had been at least two chairmen agreeing to use of the two Chinese characters mark “日盛” by Jih Sun Securities Investment Trust as corporate name, which facts demonstrate that Jih Sun Securities has not only keep silent with respect to Jih Sun Securities Investment Trust’s use of the two Chinese characters mark “日盛”, but also knowingly and actively assisted in their establishment and operation.  Thus, Jih Sun Securities has consented in an implied way to Jih Sun Securities Investment Trust’s use of the two Chinese characters mark “日盛” as corporate name.  Besides, the Trademark Act operable in 1993 did not identify use of the Chinese characters of another’s trademark as corporate name as an act of trademark infringement.  Therefore, based on the foregoing, the IP Court found that Jih Sun Securities Investment Trust does not violate the relevant laws and does not have to change the corporate name.  (August 2015)
/CCS