Online apparel seller pays TWD800,000 for infringement upon President Being’s BEING mark

　President Being Corp. (hereinafter “President Being”) sued Yuansu Co., Ltd. (hereinafter “Yuansu”) for infringing upon its BEING mark by selling online yoga clothes bearing its BEING mark and claim for damages.  The Taiwan IP Court sustained Yuansu’s trademark infringement and decided that Yuansu and its responsible person shall pay TWD800,000 as damages to President Being.  This case is appealable.  

　In addition to the successful registration of its BEING mark in 2008 for use on clothes and swimwear products, President Being has also requested with Taiwan IPO for using its BEING mark or the combination of BEING mark and other English words on other categories of products.  As such, President Being asserted that the BEING mark has been very well-known and represents a brand name commonly known in the industry.  

　In April 2017, however, it came to President Being’s knowledge that Yuansu used the BEING mark without President Being’s authorization, for which President Being issued a legal attest letter to demand Yuansu’s cease in using the BEING mark.  As Yuansu ignored President Being’s demand, in May 2017, President Being purchased two clothes sold by Yuansu as samples, whose tags and packaging carried the BEING mark.  Holding the samples as evidence of Yuansu’s infringement, President Being filed a complaint to claim damages against Yuansu in the amount of TWD3,348,000, which is equivalent to 1500 times of the unit retail price.  

　Yuansu refuted the alleged confusion between President Being’s BEING mark and the mark Yuansu uses on yoga clothes, pointing out that President Being’s BEING mark is a word mark with only the letters “E” and “G” specifically designed and all English letters arranged horizontally.  As opposed to President Being’s BEING mark, the mark Yuansu uses is a vertical combination of the word “BEING” and a stylized mudra device (a symbolic hand gesture).  Yuansu argued that they have never used the word “BEING” alone on web page or on any product, and that they used the word “BEING” to represent the spirit of yoga, and also that the mark they use is different from President Being’s BEING mark in appearance, arrangement, word font, and concept, even though the word “BEING” is present in both marks.  

　According to the IP Court judgment, the constituent word “BEING” in both marks serves as a main part to make differentiation between them because Yuansu’s mudra device cannot be pronounced and the BEING mark as a whole appears as an English word even though its letter “E” is stylized to lack a stroke.  As such, it is apparent that Yuansu uses the mark comprising the word “BEING” as trademark for marketing purpose.  Based on the foregoing, the IP Court established Yuansu’s infringement.  Moreover, in consideration of the facts that President Being failed to produce evidence to prove that the number of Yuansu’s infringing products exceed 1,500 pieces and also that the low availability of President Being’s BEING products on market which are provided only to members, rather than to all consumers, the judge held that a multiplier 1,500 for calculating claimable damages is unreasonable and TWD800,000 would be a reasonable and appropriate amount of damages calculated by a multiplier of around 400~450.  (April 2018) 

/CCS