Local famous Xiao Nan Men Food & Tofu Pudding store pays TWD1.27 million for trademark infringement

　The owner of Fool’s Noodles (Chinese: 小南門福州傻瓜乾麵), Huan Yu Co. (transliterated from 寰宇麵食館有限公司; hereinafter “Huan Yu”) initiated a civil action against the owner of Xiao Nan Men Traditional Food & Tofu Pudding (transliterated from 小南門傳統豆花), Xiao Nan Men Food Co. and Xiao Nan Men Catering Co. (transliterated from小南門食品有限公司and小南門餐飲有限公司; hereinafter “Xiao Nan Men Co.”) to allege trademark infringement against Xiao Nan Men Co. and also claim damages against Xiao Nan Men Co. in an amount of TWD69.84 million.  Taiwan IP Court heard this civil case and ruled in favor of Huan Yu that Xiao Nan Men Co. shall pay TWD1.27 million to Huan Yu and be prohibited from using any mark identical or similar to Huan Yu’s “小南門” mark and device (hereinafter “Huan Yu’s mark”) on the ground that Huan Yu’s mark had already been duly registered and there is a likelihood of consumers confusion because of the high similarity between Huan Yu’s mark and the mark used by Xiao Nan Men Co. 

  Huan Yu and its responsible person have been holding Taiwanese registrations for the “小南門福州傻瓜乾麵” mark and also several marks consisting of an ancient gate tower and the three Chinese characters “小南門”.  Based on the facts that Xiao Nan Men’s mark is very similar to Huan Yu’s mark and the registration time of it is later than that of Huan Yu’s mark, Huan Yu filed the civil lawsuit against Xiao Nan Men Co. to claim damages and request for Xiao Nan Men Co.’s cease in using any mark identical or similar to Huan Yu’s registered marks, even though Xiao Nan Men Co. used its mark in tofu pudding product. As a matter of fact, Xiao Nan Men Co. uses its mark also on other products out of the coverage of its designated ones, such as on pastry products, stuffed dumplings, steamed dumplings, all kinds of rice and noodles, soups, stir-fries.  

　Xiao Nan Men Co. denied the trademark infringement alleged against it, either out of intention or by negligence, arguing that their store, Xiao Nan Men Traditional Food & Tofu Pudding, has already been recognized as the most famous local snack food supplier since their establishment early more than thirty years ago, and thus Xiao Nan Men Co. has acquired their independent trademark distinctiveness and business reputation for Xiao Nan Men’s mark.  Xiao Nan Men Co. also tried to clear the accusation that they used their mark for products out of the designated goods of Xiao Nan Men’s mark.  

  The IP Court established and sustained Xiao Nan Men Co.’s trademark infringement on the grounds that (1) Huan Yu’s mark and Xiao Nan Men’s mark are slightly different in word font and design only, as opposed to their high similarity in overall appearance, concept, and pronunciation, (2) consumer confusion is likely to occur due to their similarity in the products the two marks are used, which are lunch box and noodles with homemade sauce, and also their similarity in ingredients and function, even though Xiao Nan Men Co. has added such descriptions as “點心世界” (meaning “snack world” in English) and “傳統美食” (meaning “traditional fine food” in English) that do not specify any kind of food, and (3) registration of Huan Yu’s mark is earlier than that of Xiao Nan Men’s mark and Huan Yu’s mark has acquired its distinctiveness after its long-term use.  This decision is appealable.  (April 2019) 

/CCS