Taipei court rules against Eslite in trademark tussle

The Taipei Administrative Court recently ruled against Eslite Corp (誠品股份有限公司) in a dispute between the well-known brand and a clothing retailer that allegedly violated its trademark.

The court said that even though Eslite, pronounced Chengping in Chinese, has become widely known in recently years, it cannot use its current fame to contest the trademark "Chengping LA DEB'E TANA," registered by the Chengping International Corp (成品國際開發有限公司) in 1993.

The court found that Eslite had registered its trademark containing the Chinese words Chengping in 1990 under various categories of service it provided, including publishing and food services.

But at the time, Eslite was unable to register its company name in the category of retail services because the category had not yet been established, the court found.

After years of expansion, Eslite has become a well-known brand, particularly as a book retailer, and has sought to secure its commercial interests by taking action against similar trademarks or company names.

In 1998, Eslite filed suit with the Intellectual Property Office, saying it was an established brand and that use of a similar trademark by the Chengping Corp might create confusion among consumers.

The office subsequently nullified Chengping Corp's trademark.

Dissatisfied with the decision, the clothing retailer took the dispute to the Taipei Administrative Court and successfully had the case reversed.

Shuai Chia-pao (帥嘉寶), one of three judges sitting for the case, said the central issue was whether Eslite could use its growing recognition to exclude the rights of others who had adopted a trademark eight years ago.

In his opinion, Judge Shuai said that the name brand recognition Eslite had in 1993 was much lower than today, and at that time consumers would have had little trouble recognizing the difference between the two companies.

"We believe the rights of the well-known brand to exclude confusing trademarks must give way to the rights of the corporation which claimed prior use of the trademark and has operated a business on that basis for years," the judge said. "We can't sacrifice the existing interests of a corporation merely for the sake of the economic interests of a famous brand."

Shuai also criticized the Intellectual Property Office, saying it has often misinterpreted law in trademark cases involving famous brands.

"There seems to be a tendency for them to rule in favor of famous brands," Shuai said.

"But the name recognition such as Eslite has now was not inherent from the moment the company started. It was only known to a few in 1993. So how could we say the Chengping Corp had intended to cause people to confuse the two companies when it registered the trademark?" the judge said.

The administrative court ruled the case should be returned for further review by the Intellectual Property Office, but both sides could still appeal to the Administrative Supreme Court.