Taisun Enterprise Co., Ltd. wins trademark infringement lawsuit against a local infringer

　The time-honored and renowned 48-year-old local store in Kaohsiung, “Xu Tai Shan Shantou Hotpot” has been sued by Taisun Enterprise Co., Ltd. (“Taisun”) for trademark infringement.  The Intellectual Property and Commercial Court (hereinafter “IP&C Court”) heard this case and decided in the first instance proceedings that the defendant, XU Zhih-Liang, (namely, Taishan Eatery, the second generation responsible person of Xu Tai Shan Shantou Hotpot) should change business name and pay TWD960,000 in damages to Taisun.  The defendant, XU Zhih-Liang pointed out that he had extended goodwill to Taisun more than two years ago by changing product names, and that he will file an appeal against the first-instance court decision.  

　Taisun contended that it has been incorporated as a listed company since 1960 with the two Chinese characters, “泰山” (transliteration, “taisun”), as the main part of a series of its trademarks used on products including mineral water, eight-treasure congee, cooking oil, tea beverages, etc. (hereinafter the “Taisun” marks) for a long period time.  Taisun has also expanded the scope of its business to cover publishing business and charity, and thus made the Taisun marks the well-known ones.  However, in 2020, defendant XU Zhih-Liang, without prior consent from Taisun, applied for registering the five Chinese characters, “徐泰山火鍋” (meaning “Xu Tai Shan hot pot”) as a trademark to be used for such goods or services as broth, tea beverages, meal kit, hotpot store menu, and also sold barbecue sauce products under the product name, “Xu Tai Shan Secret Recipe Barbecue Sauce” through Yuan Shan Food Co., Ltd..  Taisun believed the existence of the likelihood of consumers confusion and the damage of Taisun’s business reputation on the grounds that its “Taisun” marks and XU Zhih-Liang’s “Xu Tai Shan” mark are identical in appearance and pronunciation and both of them are used for food products.  

　According to the IP&C Court’s judgment on this case, defendant XU Zhih-Liang should not use the words identical or similar to the Chinese characters of “taisun” as a specific part of its business name, and should apply with the Kaohsiung City Government for change of the business name that does not include the words identical or similar to the Chinese characters of “taisun”.  Moreover, the IP&C Court also ordered that defendant XU Zhih-Liang and Yuan Shan Food Co., Ltd. should not use the words including or similar to the Chinese characters of “taisun” for its signboards, business cards, advertisements, web pages or any other marketing materials nor engage in any activity of using the words identical or similar to the Chinese characters of “taisun” for marketing purpose, and should pull down, destroy, and remove the existing signboards, business cards, web pages, advertisements, and any other marketing materials currently including the words identical or similar to the Chinese characters of “taisun”, and should also pay TWD960,000 in damages to Taisun.  (Released 2024.04.29)  
/CCS