Local well-known bookstore, Eslite loses trademark infringement lawsuit against Champion Moving Company

E200313Y2 Apr. 2020(E245)
 Eslite Corporation (hereinafter “Eslite”) sued Champion Moving Company (including another company whose Chinese company name is誠品優質包裝有限公司; hereinafter “Champion”), which is engaged in the business of packaging and moving, for trademark infringement to demand that Champion and responsible person thereof, Chen, shall pay TWD5 million in damages and also that Champion shall be enjoined from using the two Chinese characters “誠品” as trademark or company name.  This matter was brought to the IP Court for the first instance proceedings and the IP Court rendered a judgment against Eslite.  This case is appealable.  

 Eslite indicates that they have been devoted to brand management and development for its brand name “誠品” for thirty years since its incorporation in January 1989.  Under this brand name, they have developed their scope of business covering bookstore, gallery, exhibition, culture and creation, catering, living, and further expanded to include cargo packaging, loading and unloading, cargo delivery, logistics, etc..  Years of brand management and development have made the two Chinese characters mark “誠品” a well-known trademark the Taiwan.  In this regard, Champion acts of using the “誠品” mark, using the two Chinese characters “誠品” as part of its company name without Eslite’s prior consent, and claiming itself as the “Eslite in moving service industry” and bragging about its “ambition for becoming the ‘Eslite in moving service industry’ ” on its website and Facebook fan page for promotion purposes would form confusion on consumers and thus infringe upon Eslite’s trademark right.  

 The IP Court, however, does not sustain the likelihood of confusion asserted by Eslite on the ground that the “packaging” and “transporting” services provided by Champion amount to the acts of packing furniture and appliance and transporting them in different stages of moving process, which are different from general services of cargo delivery and packaging, and hence, there is not likelihood of confusion.  

 The IP Court holds that Champion’s descriptions in Chinese (literally meaning “We, Champion Moving Company, the Eslite among the moving services…under the name of ‘Eslite’.  We have the ambition to become ‘the Eslite among the moving services’ as reflected by our English company name, ‘Champion.’”) posted on its FB fan page  demonstrate its intent to lead in the industry without intentionally taking a free ride on Eslite’s business reputation nor misleading consumers into believing that Champion is related to Eslite as a franchisee, chain store, or as a group company of Eslite.  

 The IP Court also held that the evidence produced by Eslite can only prove its “誠品” mark being well recognized in the industry of culture and creation, in specific markets or by specific groups of consumers; the evidence is insufficient to substantiate that the “誠品” mark is so commonly well known among general consumers that it achieves a high degree of fame.  Based on the foregoing reasoning, the IP Court ruled against Eslite by a first instance judgment.  The case is appealable.  (March 2020)
/CCS

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