Pacific Sogo Department Stores wins trademark infringement lawsuit
E181228Y2 | Jan. 2019（E230）
Pacific Department Store Co., Ltd. (Chinese: 豐洋興業股份有限公司; hereinafter “Pacific Department Store”) (incorporated by Pacific Construction Co., Ltd.) sued the chairperson and president of Pacific SOGO Department Stores Co., Ltd. (hereinafter “Pacific SOGO Department”) over illegally use of the “太平洋SOGO” device mark. This trademark dispute arose as a result of The Far Eastern Group’s ownership acquisition of Pacific SOGO Department (jointly incorporated by Pacific Construction Co., Ltd. and Sogo Co., Ltd. in Japan, now renamed as “Far Eastern Sogo” without changing the original company name). The prosecutor brought an indictment in this case and Taipei District Court found Pacific SOGO’s chairperson and president not guilty in December 2018.
According to the prosecutor’s indictment, Pacific Department Store had filed invalidation with Taiwan IPO against the registration of the “太平洋SOGO” device mark held and owned by Japan-based Sogo Co., Ltd. and this invalidation requested turned out successful when Taiwan IPO cancelled the registration of the “太平洋SOGO” device mark for the designated services of “department stores, supermarkets, and shopping malls” on October 9, 2014 by reason that the “太平洋SOGO” device mark was similar to the “太平洋PACIFIC” mark. The invalidation decision was also affirmed and sustained by the Ministry of Economic Affairs by an administrative decision on July 13, 2015. In this regard, Pacific SOGO Department’s chairperson and president, with the knowledge that the registration of “太平洋SOGO” device mark for certain designated services had been cancelled, still had knowingly continued using the “太平洋SOGO” device mark on signboards, advertising materials, receipts, shopping bags, company website, etc. since July 2015, for which the prosecutor determined that Pacific SOGO Department’s chairperson and president were suspected of violating the Taiwan Trademark Act.
This trademark dispute was further brought to the Taipei District Court. The Court decided that use of the “太平洋SOGO” device mark by Pacific SOGO Department’s chairperson and president constituted bona fide prior use and the chairperson and president did not have the intent for unfair competition that would cause confusion on consumers on the ground that Pacific SOGO Department has already used the “太平洋SOGO” device mark on signboards as its business representation for thirty years early since 1987 and its use of the “太平洋SOGO” device mark is 10 years earlier than the application date for the “太平洋PACIFIC” mark, and also that the “太平洋SOGO” device mark is more famous than the “太平洋PACIFIC” mark.
Besides, after the cancellation of the registration of the “太平洋SOGO” device mark for certain designated services, Sogo Co., Ltd. had also sought remedies through administrative proceedings which were concluded in March 2017. Pacific SOGO Department also decided to rebrand by replacing the three Chinese characters “太平洋” (pacific) with “遠東” (far eastern) in all external representations and also to rename itself as “遠東SOGO” overall in September 2017. According to the above reasoning, Taipei District Court ruled that Pacific SOGO Department’s chairperson and president do not hold the intent for trademark infringement and thus found them not guilty. (December 2018)