Japanese company wins DUEL in Taiwanese court

In Duel Corporation v Ho Chyun Trading Co Ltd (90 Su 3456), the Taipei High Administrative Court has ordered the cancellation of Ho Chyun's DUEL mark based on Duel's prior registration of the same mark in Japan. The court held that although Duel's mark was not registered in Taiwan, the Japanese registered mark is well known to Taiwanese consumers because of the close ties between the two countries.

Ho Chyun, a Taiwanese company, registered DUEL in Taiwan in 1994 for fishing equipment. Japanese company Duel applied to the Intellectual Property Office (IPO) of Taiwan to invalidate Ho Chyun's trademark registration pursuant to Article 37(1)(7) of Taiwan's Trademark Law. This provision stipulates that a trademark is not registrable if it is a "plagiarism" of another party's mark and is likely to cause confusion among the general public.

Duel claimed that its predecessor created the DUEL mark in 1993 to be used in relation to fishing equipment. It argued that its DUEL marked fishing products are well known in Japan, and produced various advertisements and documents to back up this claim. Duel contended that since Ho Chyun is a trading company specializing in the sale of fishing equipment manufactured in Japan, it should have been aware of the famous Japanese mark before it registered DUEL in Taiwan.

The IPO dismissed the invalidation action on the grounds that Duel did not prove that its mark was known to Taiwanese consumers prior to Ho Chyun's registration. It stated that Duel's evidence did not refer to sales or advertisements of DUEL marked products in Taiwan. Duel appealed to the High Administrative Court.

The court overturned the IPO's decision and ordered the cancellation of Ho Chyun's mark. It held that Ho Chyun had plagiarized Duel's mark in violation of the Trademark Law. The court noted that before it registered the trademark, Ho Chyun had business dealings with Duel's predecessor - the creator of the Japanese DUEL mark. As a result, Ho Chyun should have been aware of that trademark. The court also reasoned that Duel's mark, although not registered in Taiwan, is known to Taiwanese consumers because of its fame in Japan and the fact that the two countries have close ties across a number of areas, such as trade, tourism and media.

Kwan-Tao Li, Lee and Li Attorneys at Law, Taipei