Local trademark dispute over well-known traditional-style shaved ice brand resolved

　The well-known Tainan shaved ice brand and store, “Ba Bao Bin Yuan Zai Hui” (Transliteration of the Chinese store name and brand name, “八寶彬圓仔惠”, whose signature product is the traditional eight-treasure ice and glutinous rice balls) has been undergoing a trademark dispute between its two branch stores, the Jinhua branch and the Guohua branch, and the dispute has temporarily come to an end.  The Jinhua branch, established by the brand founder, LU Chen-Hui (“Lu”), is currently run by Lu’s daughter, HUANG Yun-Ti (“Huang”), while the Guohua branch, which has previously earned MICHELIN’s Bib Gourmand recommendation, is operated by Lu’s sister-in-law, ZHANG Xiu-Mei (“Zhang”).  Zhang filed a trademark lawsuit against Huang due to a trademark dispute.  In the criminal proceedings of this case, the Intellectual Property and Commercial Court dismissed Tainan District Prosecutors Office’s appeal, ruing Huang’s non-infringement upon Zhang’s trademark rights.  

　The trademark dispute between Huang and Zhang centered around the well-known shaved ice brand name, “Ba Bao Bin Yuan Zai Hui”, whose corresponding Chinese character mark, “八寶彬圓仔惠” (hereinafter referred to as the “Mark in dispute”) was owned by both Huang and Zhang in two separate registrations under separate classes in spite of the two registrations being for the identical appearance and name.  The trademark battle traces back to 2002 when Lu transferred the Mark in dispute to Zhang, with the Mark in dispute registered under Class 43 covering restaurant and dining services (Trademark A).  However, in 2018, Huang successfully and separately registered the Mark in dispute under Class 29 covering food items, such as, tofu pudding, grass jelly, sweet peanut soup and also under Class 30 covering the food items including ice products and eight-treasure shaved ice, etc. (Trademark B). In the same year, Huang completed registration of her business under the Chinese name “撒豆成冰剉冰店” but her storefront continued to prominently display the brand name “Ba Bao Bin Yuan Zai Hui (“八寶彬圓仔惠”).  

　Zhang stated that due to their family relationship, in 2018, she granted a free license to Huang to use Trademark A at the Jinhua branch for operating a shaved ice store.  However, she later sent a legal notice letter to terminate the license on July 1, 2021.  After that, Zhang accused Huang of continued use of Trademark A on store signage, online platforms, and food delivery services, thereby infringing her rights to Trademark A registered under Class 43.  For defense, Huang claimed that no formal license agreement had been signed between them, and she registered Trademark B under Class 29 and Class 30 upon Zhang’s prior consent with a coexistence agreement signed by Zhang.  Therefore, Huang maintained that she never infringed upon Zhang’s trademark rights.   

　The prosecutor held that Huang’s act of providing shaved ice products through food delivery platforms, such as Uber Eats and Foodpanda fell within the scope of “restaurant services” under Class 43 and exceeded the designated use of Trademark B, thereby constituting cross-class use.  However, the court ruled that the products sold by Huang, regardless of whether they are delivered or not, are prepared and delivered only after an order is placed, which does not involve the designated restaurant services of Zhang’s Trademark A.  Also, the court believed that with the boundaries in the food and beverage industry getting blurred, subjective criminal intent and the legitimate scope of registration should still be sustained and determined first before imposing punishment.  In this case, as the Tainan District Prosecutors Office failed to prove Huang’s intent for infringement, the court upheld the original judgment and ruled that no further appeal should be taken.  (Released 2025.04.18)  
/CCS