The Decision

The appellant repeatedly claimed during the original trial: Its” 咪哒miniK” trademarks identified in mini KTV goods/services have been recognized by TIPO that the reputation established in mainland China has reached to Taiwan, and became well-known in Taiwan. Is it still not enough to judge that the appellant’s trademarks such as “咪哒miniK” are not only famous in mainland China but also famous in Taiwan? 

The issue is relevant to the determination of whether civil liability for compensation under the Fair Trade Act can apply to this case. It is an important method of attack. The original judgment that was unfavorable to the appellant was hasty and unprepared.

Ching-I Lu’s comment

1. This case involves disputes related to product appearance counterfeiting. In recent years, in Taiwan’s judicial practice, there have been many judgments determined that product appearance counterfeiting constitutes “stealing the results of other people's efforts”, and therefore Article 25 of the Fair Trade Act applies. 

2. The main dispute in this case is that the right holder (plaintiff) has never sold goods or services in Taiwan. However, its mainland trademark has been determined by TIPO in the opposition case that its reputation has reached Taiwan and become famous. The issue is that a trademark has never been used in Taiwan, is the Fair Trade Act still applicable?

3. In the field of trademark legal area such as the examination on trademark opposition or invalidation applications, "even if a trademark is not used in Taiwan, but there is objective evidence showing that the reputation established by this mark reached to Taiwan, the trademark can still be recognized as famous." This standard for identifying famous trademarks has been practiced for many years.

4. The second-instance judgment in this case was criticized by the Supreme Court for finding that the plaintiff’s trademark was not famous.

5. The opinion “The issue is relevant to the determination of whether civil liability for compensation under the Fair Trade Act can apply to this case.” held by the Supreme Court, in this case, seems to affirm that even though the right holder has never entered the Taiwan market, as long as it is “famous”, the Fair Trade Law may be applicable.