Fri, Apr 26, 2019 - Page 2 News List

TutorABC wins appeal of name trademark lawsuit

TOO GENERIC?AMC founder Peter Hsu said words such as ‘tutor’ and ‘ABC’ should not be trademarked, citing the commercial usage of the term ‘convenience store’

By Jason Pan  /  Staff reporter

The Intellectual Property Court yesterday ordered AMC Language School to pay TutorABC NT$3 million (US$97,072) in damages for trademark infringement in the second round of a lawsuit between the English-language schools.

In the first ruling earlier this year, the court also ruled in favor of TutorABC and ordered AMC and other firms to pay damages totaling NT$15 million and publish a half-page apology in the nation’s major newspapers.

AMC founder Peter Hsu (胥宏達) appealed that ruling, saying that “tutor” and “ABC” are generic terms in common use, citing other nations, such as China, that do not allow the word “tutor” to be trademarked.

TutorABC in 2012 sued more than 10 English-language schools and online teaching services claiming trademark infringement on the commercial use of “tutor” and “ABC.”

The company said it had trademarked the name “TutorABC” in 2007 with the Intellectual Property Office.

“TutorABC” has become a “well-known trademark,” it said, calling the use of similar terms such as “tutor” and “ABC” by other companies commercial theft, resulting in customer confusion and financial damages in contravention of the Trademark Act (商標法) and Fair Trade Act (公平交易法).

Among those named in the lawsuit were AMC with its Tutor4U trademark and www.tutor4u.com.tw Web site; Wells English with its TutorWell name and www.tutorwell.com.tw site; and Dr MVP with its TutorMVP service.

Also named were Jeda Language Institute with its eTutor service, Edison Technology with its HiTutor brand and other companies that use “tutor” or “ABC” for English-language education services.

Hsu said that he in 2006 had trademarked “Tutor Bank” before TutorABC’s registration in 2007, and therefore it was TutorABC that infringed on AMC’s trademark.

Hsu disagreed with both rulings on the grounds that common words cannot be trademarked, citing as an example the fact that the phrase “convenience store” is used commercially by all the leading convenience store chains in Taiwan.

Last month, Hsu and 15 other companies said that TutorABC’s actions “disrupt fair trade” and attempt to monopolize the online English-teaching market, and urged the Fair Trade Commission to intervene.

Hsu also said that Alibaba Group is a main shareholder of TutorABC, and that the Ministry of Economic Affairs has determined that it is a Chinese-funded company — a claim that TutorABC rejects.

Commission Chairwoman Huang Mei-ying (黃美瑛) at that time said that she believed the case to be contentious, as she considers “tutor” to be a common word.

Yesterday’s ruling can still be appealed.

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