Old-established braised food shop, LauTianLu wins trademark battle against local competitor

　LauTianLu, the best-known and old-established braised food shop located in Ximending of Taipei City, filed a lawsuit with the Taiwan IP Court against Luda Food Co. (Chinese: 祿大食品有限公司, hereinafter referred to as “Luda”) and its responsible person, ZHOU Ying-Ming (who is the eldest daughter-in-law of the responsible person of Shanghai Lau Tian Lu Food Co.; Shanghai Lau Tian Lu Food Co. is hereinafter referred to as “Shanghai Lau Tian Lu”) in 2018 for infringing upon LauTianLu’s registered Chinese trademarks, including “老天祿”, “台北老天祿”, and ”台灣老天祿” (hereinafter referred to as the “LauTianLu marks”) by using the five Chinese characters, “上海老天祿” as a trademark on  local major Internet platforms and signboards of brick-and-mortar stores and also by using such advertising slogans in Chinese language as “上海老天祿第二代自創品牌” (meaning the own brand built by the 2^nd generation of Shanghai Lau Tian Lu) and “上海老天祿第二代的店” (meaning the 2^nd generation store of Shanghai Lau Tian Lu) to advertise and sell Shanghai Lau Tian Lu’s meat products and braised foods, etc..  

　The responsible person of LauTianLu, Mr. Xie maintained that the LiauTianLu marks and other registered marks owned by LauTianLu are designated for use on meat products and braised foods of Class 27 and Class 29, while Shanghai Lau Tian Lu registered its marks for products of bread and confectionery products classified under Class 23, 30, 32, and 35.  That is, Shanghai Lau Tian Lu holds no trademarks for meat products and braised foods and it has never authorized Luda to use its registered marks.  Based on the foregoing, LauTianLu asserted Luda’s trademark infringement by using the marks identical or similar to the LauTianLu marks.  

　Luda defended itself by arguing that it used the said advertising slogans to represent the identity of its operator as the 2^nd generation of the founder of Shanghai Lau Tian Lu, who inherited the technology from Shanghai Lau Tian Lu, and that “Shanghai Lau Tian Lu” was used not as a trademark nor can it be interpreted as being used as a trademark.  Besides, Mr. Xie had not registered the LauTianLu marks until 1983, but the responsible person of Shanghai Lau Tian Lu had already started his business under the designation of “Shanghai Lau Tian Lu” for selling confectionery and braised foods before 1983 for more than thirty years, which substantiates the fact that Luda’s use of the five Chinese characters, “上海老天祿” (Shanghai Lau Tian Lu) constituted bona fide prior use.  Moreover, Luda was supported and guided by Shanghai Lau Tian Lu’s responsible person to continuously use the five Chinese characters, “上海老天祿” (Shanghai Lau Tian Lu) to sell its products.  

　In June 2019, the IP Court decided this trademark infringement case against Luda by ruling that Luda’s use of the five Chinese characters, “上海老天祿” (Shanghai Lau Tian Lu) and the said slogans constituted trademark use, not bona fide prior use, and such use would cause consumers confusion that the products sold by Luda came from LauTianLu, or Luda and LauTianLu had franchisor-franchisee relationship.  The IP Court also determined that Luda should not use any mark or description identical or similar to the LauTianLu marks on meat products and braised foods products, and should also destroy relevant signboards, advertising standees, and packaging boxes.  Further in May 2020, the case went to the second instance proceedings the IP Court affirmed the first-instance judgment, and hence, Luda appealed this case to the Supreme Court.  In March 2021, the Supreme Court dismissed Luda’s appeal.  This case is concluded in LauTianLu’s favor accordingly.  (Released 2021.03.23)  

/CCS