Long-Drawn trademark case decided for Solutia against Taiwanese window film supplier

　Singapore-based Solutia Singapore Ptd. Ltd. (hereinafter “Solutia”) sued Taiwan-based Leader Window Film Co., Ltd. (Chinese: 全統隔熱紙有限公司; hereinafter “Leader Window”) for Trademark Act violation also pursued this case civilly to seek damages of TWD5.25 million.  Leader Window presented its defensive argument of bona fide prior use which should be not subject to any person’s trademark right.  This case has gone through trials of three instances to be finalized in favor of Solutia.  

　Solutia maintained that its V-KOOL mark has been a well-known trademark due to its worldwide use in other countries for years, even though the V-Kool mark was registered in Taiwan in 1996 and promoted by its general distributor, V-Kool (Taiwan) Co., Ltd. (hereinafter “V-Kool Taiwan”), and that Leader Window’s imitation of the V-Kool mark has caused confusion on consumers, which has not only infringed upon Solutia’s trademark right but also affected trading order.  

　Earlier than V-Kool’s mark registration in 1996 in Taiwan, Leader Window has used the V-Kool mark on window film products since 1991 by presenting its quotation sheets issued in 1995 to prove its prior use before Solutia’s registration completed in 1996.  Also as found and decided by the court in criminal aspects earlier, Leader Window’s prior use had formed its bona fide prior use before V-Kool’s mark registration, which is able to clear the offense of imitation alleged against Leader Window and sustain its continued use of the mark.  

　Taiwan IP Court examined and reviewed the details of quotation sheets provided by Leader Window and also the postal documents produced by Solutia, finding that Leader Window had once inquired about the possibility of acting as Solutia’s distributor in China and Taiwan before June 1996, which establishes a fact that it was not that Leader Window used the V-Kool mark without the knowledge of it and Leader Window’s bona fide prior use defense is not sustainable.  The IP Court, therefore, decided on this case against Leader Window.  This case was further brought to the Supreme Court but was still dismissed.  The IP Court’s decision becomes final accordingly.  (August 2019) 

/CCS