The Hershey Company wins a trademark battle against Taiwan Kaiser Foods Industrial Co., Ltd. in Taiwan
E190410Y2 | May. 2019（E234）
For the trademark infringement lawsuit filed by The Hershey Company (“Hershey”) against Taiwan Kaiser Foods Industrial Co., Ltd. (“Taiwan Kaiser”), the Taiwan IP Court rendered a judgment favorable to Taiwan Kaiser in the first instance proceedings in September 2017. Hershey thus appealed this case to the superior court and the appeal successfully reversed the first-instance judgment to have Taiwan Kaiser’s infringement sustained.
According to the IP Court judgment in the second instance proceedings:
1. There is a high likelihood of consumers confusion between Hershey’s chocolate products and Taiwan Kaiser’s on the ground that consumers will not pay high degree of attention to inexpensive products at a convenient store.
2. For the product in dispute No. 1-1 and No. 1-2, both of their packaging bags have a dark-colored and teardrop-shaped device as the background and capital English letters combination in white at the bottom and small English letters combination on top. These bigger letters begin with a capital K and end with “S” and the other letters include “I”, “S”, and “E”. The bigger and smaller letter combinations of both product in dispute No. 1-1 and No. 1-2 are of similar length. Each product in dispute No. 1-1 and No. 1-2, if viewed overall as a whole, share similar packaging and trademarks (as shown in the table below).
In addition, for the product in dispute No. 2-1 and 2-2, their respective word mark, “KAISER’S” and “HERSHEY’S” is both presented in capital letters and bold font in similar word length without special artistic design. Also, their second syllables begin with “S”, while the script type of “S” in “KAISER’S” is similar to that of “H” in “HERSHEY’S” and they both ended at “’S”. Likewise, “KAISER’S” and “HERSHEY’S” are similar if viewed as a whole (as shown in the table below) .
3. As a competitor of Hershey in the same industry, Taiwan Kaiser should have paid more attention to the information regarding its competitors than consumers. Since its establishment in 1894, Hershey has been using the HERSHEY’S mark on its products sold around the world and has also started using the same mark in Taiwan since 1974. Incorporated in 1977, Taiwan Kaiser’s using its mark KAISER’S, however, is much later than Hershey’s use of the HERSHEY’S mark, which makes it reasonable to conclude that Taiwan Kaiser had known about Hershey’s use of the HERSHEY’S mark, and such a conclusion makes it clear that Taiwan Kaiser does not use its KAISER’S mark in good faith.
4. Taiwan Kaiser has successfully and successively registered three trademarks since 1977. However, the comparison between their three registered trademarks and the other three actually used on Taiwan Kaiser’s products reveal a fact that Taiwan Kaiser transformed the three registered ones by changing and taking part of them and then piecing up the three marks they actually use on their products, a fact demonstrate Taiwan Kaiser’s taking a free ride on Hershey’s business reputation. (April 2019)