Roche Bobois International is a famous French furniture producer designing gracious and luxury furniture in Modern or European classic styles. Roche Bobois International was established by the Roche family at Paris in 1896 and has been in operation for more than a century. The company opened it’s first specialty store upon the main business street of Paris, Boulevard Saint-Germain in 1960, lead by the contemporary master designer Pierre Paulin who received the title of National Imperial Designer of France. The furniture products of Roche Bobois are popular among general customers as well as nobles and presidents of several countries. Some of the Roche Bobois furniture has even become part of the art collection of many museums.

Roche Bobois is represented in 40 countries through a constantly rising network of more than 240 stores. The first Roche Bobois shop in Asia was opened in Taipei in 1980. Starting in 2003, Roche Bobois used “罗奇堡(in simplified Chinese characters)” as its Chinese transliteration to market it’s products in China and set up their own shops and flagship stores in Shanghai, Beijing and Hangzou of China. Since then, “ROCHE-BOBOIS” has been always marked along with “罗奇堡(in simplified Chinese characters)” when doing businesses or advertising in Greater China. In 2004, Roche Bobois invested $60,000 RMB in an inner-page advertisement of ELLE DECORATION circulating around China; the advertisement was in the name of “法国罗奇堡家居 (French ROCHE-BOBOIS Home Furnishing).”

Despite that the Chinese brandname “罗奇堡” of ROCHE-BOBOIS has been widely used in China, the French company has never owned the trademark rights for “罗奇堡” in Class 20 in China. Back in 2004 the Chinese trademark registration “罗奇堡” in Class 20 had been registered by someone else, and later assigned to上海罗奇堡家具有限公司(Shanghai Roche Bao Furniture Company Ltd.), which is the owner of the trademark at issue in this case (hereinafter the “Respondent”). Based on the evidence presented, as soon as the Respondent set up its company in December 2003, the Respondent contracted with Roche Bobois International as a local licensed distributor for the distribution of the products.

In March 2012, The Respondent filed a trademark application for “罗奇堡” in Class 35 (the “trademark at issue”) with the Taiwan Intellectual Property Office (TIPO). Roche Bobois filed opposition against the trademark at issue and contended that the Respondent knowingly registered “罗奇堡” on “agency services for importing and exporting, procuring goods for other enterprises, displaying goods on communication medias for retailing purposes, promoting goods or services for others, TV commercials and the decoration of shop windows” not only diluting the fame and reputation of the opposing trademarks but also causing confusion among the relevant public regarding the origin of particular furniture goods.

To support the contention, Roche Bobois reasoned that the fame of the “Roche Bobois” and “罗奇堡” has been established before the filing date of the trademark at issue, namely March 28, 2012. The opposing trademark “ROCHE-BOBOIS” and its unregistered Chinese brand name “罗奇堡” are always used and advertised conspicuously together when the opponent are marketing its furniture products in both China and Taiwan. Given the local advertising activities of the Roche Bobois, the consumers have already recognized “罗奇堡” as the Chinese transliteration of the famous brand “ROCHE-BOBOIS”. Moreover, consumers identify that these Chinese characters are the distinct sign of the origin of the furniture from “ROCHE-BOBOIS.”

Besides, Roche Bobois asserted that the trademark at issue “罗奇堡” is highly similar to “ROCHE-BOBOIS” because the pronunciations of these two trademarks sound similar. Further, when compared to the opponent’s prior used trademark “罗奇堡”, the trademark at issue is exactly the same as the opposing trademark in appearance, pronunciation and in literal meaning.

As mentioned above, the Respondent has been a licensed distributor of Roche Bobois in China since 2003. In the Roche Bobois distribution agreement with the Respondent, the Respondent is prohibited from using any brand names which could  potentially cause confusion among customers, regardless of whether the used brand name is in Chinese or any other foreign language. Though the trademark at issue was designated to use in services of class 35 as opposed to the opposing trademarks designated to use in goods of class 20, Roche Bobois asserted that the designated class 35 services including “the decoration of shop windows,” which would constitute similarity to goods of the class 20 such as “showcases, display shelves” and related interior decorations in which the opposing trademarks are designated for use.

Moreover, both wordings “罗奇堡” and “家具 (Furniture)”form a part of the Respondent’s company name “上海罗奇堡家具有限公司 (Shanghai Roche Bao Furniture Company Ltd.);” which further confirms that the Respondent is doing business in the sales of furniture, in addition to agency services for importing and exporting. Roche Bobois has therefore claimed that the Respondent must have obtained the registration of the trademark at issue in bad faith, attempting to pirate the Chinese brandname of Roche Bobois in the furniture markets of both China and Taiwan, given the geographical and the contractual relationships between the parties.

The Trademark Act §30-1-12 stipulates that a trademark shall not be registered in being identical with or similar to another person’s earlier used trademark and to be applied for goods or services identical with or similar to those for which the earlier used trademark is applied, where the applicant with the intent to imitate the earlier used trademark, being aware of the existence of the earlier used trademark due to contractual, regional, or business connections, or any other relationship with the proprietor of the earlier used trademark, files the application for registration, unless the proprietor of the said earlier used trademark consents to the application.

In view of the foregoing, TIPO found that Roche Bobois has been using the trademark at issue in the market from 2003, earlier than the time the Respondent applied for the registration of the trademark at issue on March 28, 2012. This renders Roche Bobois the earlier user of the trademark at issue. As a result, TIPO has ruled that the Respondent obviously has been aware of the trademark at issue due to the its regional and contractual relationships with Roche Bobois. The Respondent’s registration of the trademark at issue was filed in bad faith and therefore should be cancelled according to the Trademark Act §30-1-12.