A local six-star physical checkup clinic lost a trademark dispute lawsuit to Taiwan Adventist Hospital
E191128Y2 | Dec. 2019（E241）
Xin-Yi 101 Health Management Center (Chinese: 信義101健康管理診所; hereinafter “Xin-Yi 101”), which is renamed from Taiwan Adventist 101 Clinic, namely “臺安101診所” in Chinese and has advertised itself as providing physical checkup service with six-star medical equipment, confronted Taiwan Adventist Hospital (Chinese: 臺安醫院; hereinafter “Taiwan Adventist”) in court for trademark infringement dispute. The Taiwan IP Court sustained the occurrence of consumer confusion and ruled against Xin-Yi 101. This case is appealable.
Taiwan Adventist has been using its two Chinese character mark, “臺安” for more than thirty-three years ever since 1954 when Taiwan Sanitorium and Hospital was established and further renamed and reestablished as Taiwan Adventist Hospital in 1986. The two Chinese character mark, “臺安” has been duly registered in Taiwan since 2003 (hereinafter referred to as the臺安mark). Xin-Yi 101, however, not only used the臺安mark as part of its original Chinese name, “臺安101診所” and in its official website but also used in its business card a logo similar to that of Taiwan Adventist. Moreover, Xin-Yi 101 falsely claimed itself as a branch of Taiwan Adventist and made in its quotation sheet the designation, “基督復臨安息日會醫療財團法人臺安101診所” that contained the full Chinese name of Taiwan Adventist and also the臺安mark. The foregoing acts of Xin-Yi 101 apparently has impaired general consumers’ rights and also Taiwan Adventist’s reputation.
Xin-Yi 101 denied the trademark infringement alleged against it, stressing that the臺安mark as part of its original name, 臺安101診所, was used with the consent of the president of Taiwan Adventist also with royalty paid. The president of Taiwan Adventist also appeared together with the vice president and other superintendents to extend congratulations when Xin-Yi 101 opened, which formed their implied consent to Xin-Yi 101’s use of the臺安mark.
According to the IP Court’s reasoning provided in the judgment, Xin-Yi 101 pointed out the president of Taiwan Adventist to justify its use of the臺安mark, but the president fully negated it and indicated that he is simply a director of Taiwan Adventist and a director has no authority to give consent nor grant authorization for trademark use. Besides, Taiwan Adventist also issued a letter to Xin-Yi 101 to assert its rights in March 2019, and in this regard, Xin-Yi 101 would have no legitimate basis to assert its bona fide use. In addition, even though Xin-Yi 101 has been renamed to remove the two Chinese characters, 臺安, it probably would change it back again. Therefore, the IP Court determined and ruled that Xin-Yi 101 shall never use any Chinese words and trademarks identical or similar to the臺安mark to prevent Xin-Yi’s repeated use of the臺安mark in the future. (November 2019)