Qing Dynasty Royal Herbalist Biotechnology Co., Ltd. defeated in trademark lawsuit

Taiwan Yue’s Tong Ren Tong Limited (Chinese: 樂氏同仁堂; hereinafter “Yue’s T.R.T.”), known for imperial medication, has been tangling with Qing Dynasty Royal Herbalist Biotechnology Co., Ltd. (Chinese: 京都同仁堂生物科技股份有限公司; hereinafter “Qing Dynasty Royal Herbalist”) about trademark licensing dispute in recent years, for which the representative of Yue’s T.R.T.’s 14th generation filed a complaint with the IP Court to claim damages against Qing Dynasty Royal Herbalist.  The IP Court decided in favor of Qing Dynasty Royal Herbalist in the first instance proceedings but reversed the decision in the second instance proceedings by ruling that Qing Dynasty Royal Herbalist shall pay TWD1.26 million in damages and be enjoined from using the Chinese characters trademark “樂氏同仁” and “樂家老舖” and also shall remove the said two marks used on its web pages, print materials, publications, advertising materials, and products.  

Like many other supplier licensees of the “樂氏同仁” and “樂家老舖” marks, Qing Dynasty Royal Herbalist had been a licensee of the two marks until 2011 when its cooperation relationship with Yue’s T.R.T. changed.  Yue’s T.R.T. accused Qing Dynasty Royal Herbalist of failing to follow the relevant covenants and conditions by using the “樂氏同仁” and “樂家老舖” marks on its product “Hibiscus Youthful Radiant Cream” (Chinese product name: 山芙蓉青春喚顏霜) and other sixteen products without first providing the product approval submission form and paying royalty.  For Qing Dynasty Royal Herbalist’s breach, Yue’s T.R.T. issued a legal attest letter on December 14, 2011 and sent an email on December 22, 2011 to Qing Dynasty Royal Herbalist to declare termination of trademark license granted to Qing Dynasty Royal Herbalist, but Qing Dynasty Royal Herbalist ignored Yue’s T.R.T.’s notices and thus caused its trademark infringement.

Based on the fact regarding Yue’s T.R.T.’s termination of the licensing relationship with Qing Dynasty Royal Herbalist on December 14, 2011, the IP Court rendered a judgment ordering Qing Dynasty Royal Herbalist to pay TWD1.26 million to Yue’s T.R.T. after considering Qing Dynasty Royal Herbalist’s successive change of its product packaging and trademark used on its products and also the records of its royalty payments in the past years.  The case is appealable.  (December 2016) 

/CCS