Chairman of Pacific SOGO Department acquitted in trademark lawsuit
E190720Y2 | Aug. 2019（E237）
After acquiring the management right of Pacific SOGO department store, Far Eastern Group has been struggling with Pacific Department Store Co., Ltd. (Chinese: 豐洋興業股份有限公司; hereinafter “Pacific Department Store”) over the three Chinese characters “太平洋” as part of the trademark in dispute, for which Pacific Department Store sued the chairperson and president of Pacific SOGO Department Stores Co., Ltd. (hereinafter “Pacific SOGO Department”) for Trademark Act violation. With this case being pending at the court for years, the IP Court found Pacific SOGO Department’s chairperson and president not guilty in the second instance.
The battle for management right of Pacific SOGO department store has caused much disturbance which never goes down for more than ten years. Pacific Department Store claimed that Pacific SOGO Department has been knowingly using the “太平洋SOGO” device mark in the knowledge that Pacific Department Store is the proprietor of the “太平洋PACIFIC” mark. In this regard, Pacific Department Store filed a complaint against the chairperson and president of Pacific SOGO Department. After that, in 2017, the prosecutor brought an indictment against the chairperson and the president, who were acquitted by Taipei District Court subsequently in 2018.
The prosecutor appealed Taipei District Court’s judgment to the IP Court. According to the IP Court’s holding, Pacific SOGO Department has met the requirement of bona fide prior use before registration application for the “太平洋PACIFIC” mark. Therefore, Pacific SOGO Department’s continued use of the “太平洋SOGO” device mark in other branch stores will not constitute trademark right infringement.
Moreover, subsequent to the finalization of administrative proceedings for the “太平洋SOGO” device mark in March 2017, the chairman and the president of Pacific SOGO Department had promptly rebranded by replacing the three Chinese characters “太平洋” (pacific) with “遠東” (far eastern) in all external representations and also to rename itself as “遠東SOGO” overall. Judging from Pacific SOGO Department’s business scale and the timing of change of business representation, the IP Court held that Pacific SOGO Department did not slack off in or delay the trademark and name replacement with bad intention, nor did it hold the intent to commit trademark infringement. According to the above reasoning, IP Court dismissed the prosecutor’s appeal and let stand the not-guilty judgment for Pacific SOGO Department’s chairperson and president. (July 2019)