Taiwan Supreme Court rejects Cha Yi Food’s appeal, upholds non-infringement decision for “Chi Chi Wan” trademark

　Cha Yi Food Industries Co., Ltd. (hereinafter “Cha Yi Food company”) sued Yi Pin Xiang Food Co., Ltd. (hereinafter “Yi Pin Xiang Food company”), alleging that the latter infringed the copyright in its "Chi Chi" word mark (transliteration of its Chinese-character trademark "吃七") and its "open mouth with tongue graphic (without drool)" design mark and sought damages.  The IPC Court ruled against Cha Yi Food company at both the first and second instances.  The Supreme Court dismissed Cha Yi Food company’s appeal, leaving the lower courts' decisions intact.     

　In the early 1970s, Li Tung-Yuan and his younger brother, Li Chui-Xin, operated a rice pudding business in Taichung.  Li Tung-Yuan later relocated to northern Taiwan and then, beginning in 1985, registered the "Chi Chi" word mark and the "open mouth with tongue graphic (without drool)" design mark as trademarks.  He subsequently established Cha Yi Food company and Jia Chi Wan Food Co., Ltd. (hereinafter “Jia Chi Wan company”).  Meanwhile, Li Chui-Xin founded Chi Chi Wan Food Co. in Taichung and later married Liang Yi-Chi (hereinafter “Liang”). Following the couple's divorce, Liang took over the business and renamed it Yi Pin Xiang Food Co., Ltd..  

　Cha Yi Food company alleged that in October 2009, Liang and Yi Pin Xiang Food company, without its consent or authorization, reproduced or adapted its “Chi Chi” mark and "open mouth with tongue graphic (without drool)" design mark and subsequently registered five similar trademarks, including "Chi Chi Wan" and an "open mouth with tongue (with drool)" design, and used them as logo marks, thereby infringing its copyright.  Cha Yi Food company therefore filed a lawsuit with the IPC Court, seeking joint and several damages of TWD840,000.

　Yi Pin Xiang Food company argued that Cha Yi Food company's "Chi Chi" mark had expired and the registration of the "open mouth with tongue graphic (without drool)" design mark had been revoked.  The company further contended that, in June 2009, Cha Yi Food company had assigned the "Chi Chi" mark to Liang as a gift, and Liang, with the consent of Li Tung-Yuan, subsequently applied to register the "Chi Chi Wan" mark in October 2009 and granted Yi Pin Xiang Food company a non-exclusive license to use the mark.  Accordingly, Yi Pin Xiang Food company maintained that it had not infringed any copyright.

　The IPC Court held in the first instance proceedings that the "Chi Chi" mark and the "open mouth with tongue graphic (without drool)" design mark constituted works protected under Taiwan's Copyright Act, with Cha Yi Food company being the copyright owner. 　Moreover, the IPC Court found that Liang indeed had obtained Li Tung-Yuan's consent to use the "Chi Chi" mark in applying to register the "Chi Chi Wan" mark.  Accordingly, Cha Yi Food company has no basis to argue that Liang had intentionally or negligently infringed its copyright.  As for the "open mouth with tongue (with drool)" design, although it had not been authorized, the IPC Court held that Cha Yi Food company’s claim for damages was time-barred under the applicable statute of limitations and therefore dismissed the claim.  Cha Yi Food company appealed this decision, but in the second instance proceedings, the IPC Court dismissed the appeal and affirmed the lower court's judgment.  Cha Yi Food company subsequently filed a final appeal with the Supreme Court, which likewise dismissed the appeal.  (Released 2025.07.17)  
 /CCS