Founded in 1965, a local well-known restaurant, Rong Rong Yuan Restaurant (Chinese name: 榮榮園; hereinafter the “restaurant”) had been run by a couple, Huang and Li as proprietors until 2013 when Endless Innovation Food & Beverage Management Consulting Co., Ltd. (hereinafter “Endless Innovation”) took over and further successfully had the combination of the restaurant’s Chinese store name, “榮榮園” and its English store name “Rong Rong Yuan Restaurant” registered as a trademark in February 2016 (hereinafter the “subject mark”). Subsequently, it came to Endless Innovation’s knowledge about a local company’s unauthorized use of the three Chinese characters, “榮榮園” on ready meal pack products, for which Endless Innovation filed a lawsuit to assert infringement against Sinkai Bio-Tech Co., Ltd. (Chinese: 興凱生化股份有限公司; hereinafter “Sinkai”), the seller of the said ready meal pack products bearing the three Chinese characters, “榮榮園” (hereinafter the “product in dispute”). The IP Court heard this case and decided on it against Endless Innovation but later reversed its decision to award Endless Innovation TWD720,000 in damages.
As indicated by Endless Innovation, it is a fact that the responsible person of Sinkai, surnamed Shih, indeed cooperated with the couple, Huang and Li in 2008. During their cooperation, Huang and Li authorized Shih to use the restaurant’s trade name and the restaurant’s Chinese store name, “榮榮園” and its English store name “Rong Rong Yuan Restaurant”, which were not registered as trademarks at that time, for Sinkai’s ready meal pack products for two years only. However, with the agreed upon time period of authorized use expiring and the said couple being no longer the restaurant’s proprietors, Sinkai still continued using the three Chinese characters “榮榮園” on its ready meal pack products. Moreover, Shih also filed an application for registering other three similar Chinese characters, “園榮榮” as a trademark in December 2015 to cause confusion, which act apparently constitutes trademark infringement.
According to the IP Court judgment, Sinkai as a general agent has advertised its ready meal pack products as coming from the said couple so as to attract relevant consumers’ attention and their purchase, and Sinkai uses “榮榮園” and “Rong Rong Yuan Restaurant” not for marketing its own products or services but for referring to the restaurant’s products or services. Thus, the bona fide prior use alleged by Sinkai should not be sustained.
Also as reasoned in the IP Court judgment, Shih’s act of filing a trademark application for “園榮榮”, which is simply a different arrangement and combination of the same three Chinese characters of “榮榮園”, demonstrates that Shih had the intent for imitation, not a bona fide intent. With clear knowledge of the facts concerning the existence of the subject mark and its proprietor being Endless Innovation, instead of the said couple, Sinkai and its responsible person knowingly continued using the subject mark, and therefore, it is believed that Shih held a subjective intent for trademark infringement. (Released 2020.05.27)