Eslite Corporation wins trademark lawsuit in retrial at High Court

　The trademark lawsuit between Eslite Corporation (Chinese: 誠品股份有限公司; hereinafter “Eslite”) and Champion Moving Company (Chinese:  誠品搬家有限公司; hereinafter “Champion Moving”) has been dragging on for years after Eslite filed this lawsuit asserting trademark infringement against Champion Moving.  Champion Moving won this case in the first instance proceedings, but the success did not continue; it received a reversed court decision in the second instance proceedings, and as a result, should pay Eslite TWD3 million as damages.  This lawsuit further moved to the proceedings at the Supreme Court and was remanded back to the High Court for retrial.  The High Court handed down a decision that Champion Moving should pay TWD6 million as damages to Eslite.  Currently, the decision is not final.  

　Eslite made a statement on its official website that Champion Moving recently has frequently made one-sided statements on social media, for which Eslite saws the necessity of making clarification so as to ensure a correct and fair understanding of the case.  According to the judgment entered into by the IPC Court (the Intellectual Property and Commercial Court) on the trademark infringement lawsuit on August 17, 2023, Champion Moving should not use the Chinese-character marks, “誠品” (hereinafter the “subject mark”) and “誠品物流” and should remove all and any articles bearing the two marks, and Champion Moving and its responsible person should jointly and severally pay damages to Eslite.  

　The full text of the aforesaid IPC Court judgment was made public on August 31, 2023 and the reasoning of it is summarized as follows.  First of all, Champion Moving violates the Trademark Act by (a) using Eslite’s registered well-known Chinese-character trademark, “誠品”, without obtaining registration of the subject mark and using it as a part of its company name to provide services, and (b) using the two Chinese characters of the subject mark, “誠品”, either alone or in enlarged font, to form distinctiveness.  Moreover, before Champion Moving’s incorporation in 2006, the subject mark had been determined and recognized by Taiwan Intellectual Property Office and the court, in 1993, 1998, 2000, and 2001, as a well-known trademark commonly known to general consumers.  

　Secondly, Champion Moving had been frequently using the subject mark, either alone or in enlarged font, on its trucks, boxes, uniforms, and company websites, which is very likely to lead to a mistaken understanding that the products or services provided by Eslite and Champion Moving are of the same source or that the two are affiliates or in licensor-licensee or franchisor-franchisee relationships.  

　Thirdly, Champion Moving’s responsible person admitted in an interview in 2010 that he had been borrowing the name of Eslite’s Eslite Bookstore, “誠品” in order to attain a status in the moving service industry as Eslite in bookstore business, and such a statement had been quoted on his blog, Facebook, and website many times.  However, by so doing, Champion Moving has constituted an act of taking a free ride on the subject mark.  (Released 2023.09.01)  
/CCS