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“Actual use of a registered trademark […] in a form differing in elements which do not affect the identity of the trademark […] shall constitute use of the registered trademark,” as stipulated in Article 64 of the Trademark Act. However, actual use in identity of the trademark does not prevent it froman infringement finding. The Taiwan Intellectual Property Court confirmed in a judgment in August of 2015 that altering a trademark in actual use, even if it is deemed to be the identity to the trademark registered, does not affect the finding for trademark infringement.
RIMOWA, a German travel luggage manufacturer, filed a lawsuit in the Taiwan IP Court accusing KGT International (KGT) for trademark infringement by using an enframed word mark (enframed mark) on KGT’s travel accessory products. Observing the enframed mark as a whole and considering the sales of goods KGT is engaging in, RIMOWA asserted that use of the enframed mark is an infringement of RIMOWA’s registered trademark.
RIMOWA alleged its trademark is well-known and it enjoys worldwide reputation. It has been investing a great amount of expenses in advertising its suitcases in Taiwan for years. The defendant KGT’s actual use of its mark “Rowana” with a transverse elliptical external frame was extremely similar to RIMOWA’s trademarks. Relevant consumers were easily confused as to the source of KGT’s products, since people visited RIMOWA retail stores were requesting a discount as offered in the TV shopping programs where KGT’s products were sold. RIMOWA contended that because KGT’s own mark was only aware of by a relatively smaller group of people in Taiwan, KGT’s use of an enframed mark was free-riding on RIMOWA’s business goodwill. For the relevant consumers, as RIMOWA argued, such infringing use was potentially diluting or reducing the distinctiveness of RIMOWA trademark and the uniqueness of source of RIMOWA’s goods. To deal with KGT’s alleged acts of infringement, RIMOWA had sent cease-and-desist letters and also filed for trademark opposition and revocation against KGT’s trademarks. Despite doing so, KGT did not stop its use of the Rowana mark with the elliptical frame upon being served with the warning letters, which demonstrated KGT’s bad faith. Therefore, according to Article 69 of the Trademark Act, RIMOWA claimed for injunctions and damages in order to deter the alleged from infringing use of the enframed mark.
KGT countered that it did not infringe RIMOWA by using the enframed mark. The term Rowana was named after the nomenclature of a species of fish, independent from any concepts relating to RIMOWA. Secondly, the addition of a frame that was of no distinctiveness essentially was a rather common practice in the industry merely for the purpose of identification. TIPO’s Examination Guidelines on Distinctiveness of Trademarks establishes that no one shall preempt exclusively the right to use simple lines or pure basic geometric figures. RIMOWA’s allegations regarding the similarity between the enframed mark and RIMOWA’s trademarks was baseless because, as argued, KGT should have had the freedom of using said elliptical external frame, KGT explained. Furthermore, KGT suggested that RIMOWA’s products were only known by a specific group of consumers with higher consumption capability whereas none of the presented evidence established the well-known status of RIMOWA’s trademark. Most important of all, the addition of the external frame does not modify the main portion of the Rowana mark, suggesting that the actual use of the mark remained as how it was registered even before the addition. KGT did not intend to counterfeit RIMOWA’s trademark. KGT believed that its actual use is no more than a legitimate exercise of its trademark right within the scope of protection.
Considering both parties’ arguments, the court ruled as follows:
- RIMOWA’s trademark is well-known to consumers
RIMOWA enjoys 14 retail locations in Taiwan up to this date. Since 2013, it has been investing considerably in its marketing campaign and many RIMOWA’s activities had publication in the mass media. RIMOWA was ranked in second place as a brand of luggage by a magazine in 2013, let alone its popular online search results. Its sales in Taiwan were increasing so rapidly that the figures had reached more than NT$ 0.7 billion in 2013. All evidence positively corroborated that, even before the KGT's "Rowana" trademarks had been registered in 2012 and 2013, RIMOWA had already been widely aware of by the relevant consumers in Taiwan and therefore became a well-known trademark.
- KGT’s use of the enframed mark constitutes trademark infringement
Article 68(3) of the Trademark Act provides that [trademark infringement was constituted by, without the consent of the righter holder,] using a trademark which was similar to the registered trademark […] in relation to goods or services identical with or similar to those for which the registered one was designated where a likelihood of confusion on relevant consumers results.
To determine the similarity between the enframed term and the trademark, the court purported that the comparison shall be made to their entirety. The court found that the enframed mark’s first and last letters and the elliptical external frame are the same as RIMOWA’s trademark. Also, each of both term and the trademark has six letters closely aligned. They share a similar design concept that a consumer of general knowledge and experience having the ordinary level of attention may still confuse as to the source of the products. Thus, KGT’s enframed mark was considered similar to RIMOWA’s trademark.
KGT’s products were highly related to RIMOWA’s various hand luggage, travel trunks/bags, vanity cases, and briefcases in terms of products’ functionality, material, and manufacture. When a similar enframed term was labeled onto those KGT’s products, it may easily mislead a consumer to perceive that a given KGT’s product was from the same or a related source of RIMOWA, the court added.
Therefore, reasoning the factors of RIMOWA’s degree of fame, the similarity of the marks, and the categories of the products for sale, the court held that KGT infringed upon RIMOWA’s trademark right.
As for KGT’s argument that it was only adding a simple non-distinctive basic geometric elliptical external frame to its own mark as a legitimate exercise of trademark right that such addition maintained the identity of the mark as it was registered, the court found it not admissible. The court pointed out that KGT’s registered marks are all different from the actually-used enframed mark. It became doubtful whether KGT was using the mark with good faith. Even if the use of the enframed mark may keep the identity of the registered mark for the purpose of “maintenance use,” here, however, for the determination of infringement, the enframed mark as a whole was still considered similar to RIMOWA’s trademark. Trademark infringement was therefore established.
According to Article 71(1)(3) and 71(2) of the Trademark Act, the court ruled to award a damage of NT$ 3,357,000, based on the total of unit prices of the infringing products NT$33,570 timed by a statutorily allowable multiple of 100.
In this case the court indicated the differences between a trademark’s maintenance use and infringement use. The court held that the identity of a trademark could be treated differently depending on the nature of a given case. The fact whether the identity exists between a registered mark and the actually used version of the mark might be helpful for establishing maintenance use of the registered trademark. However, as the court emphasized here in this case, identity use might not weigh against an infringement finding.