| Trademark | |||
| I. | Insights from the COMEBUY "Haishen" Trademark Case | ||
| COMEBUY, a well-known beverage chain in Taiwan, introduced a drink named "Haishen Milk Tea" (“Haishen” means “sea god” in Chinese ) on its menu, and also printed "Haishen Milk Tea" on its sales invoices and cup labels. If another party had already registered the trademark "Haishen", does COMEBUY's conduct constitute trademark infringement? In the Taiwan Intellectual Property and Commercial Court Civil Judgment No. 48, 2023,First Instance, the court pointed out that trademark law focuses not merely on whether a merchant prints a certain word on menus, cups, or invoices, but more importantly on whether consumers, upon seeing such words, would perceive them as a brand identifier denoting the source of the goods or services. If not, it does not constitute trademark infringement. |
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| Case Background: | |||
| The plaintiff is the owner of Registered Trademark No. 01830579 "海神" (Haishen) for tea leaves and restaurant/beverage services. COMEBUY sold beverages named "Haishen Milk Tea," and "Haishen Latte." These names appeared on official website menus, in-store price lists, promotional materials, invoices, and beverage cup labels. The plaintiff asserted that COMEBUY, by using the term "Haishen" on beverages, created a likelihood of confusion among consumers and thereby constituted trademark infringement. COMEBUY countered that "Haishen" was merely an item name, whereas the actual brand identifier was "COMEBUY." Consumers would not assume, merely from seeing "Haishen Milk Tea" on a cup label, that the beverage originated from another brand named "Haishen." The main issue in this case is: Does the appearance of registered trademark text on products, packaging, menus, advertisements, or invoices necessarily constitute "trademark use"? The court answered: Not necessarily. |
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| Under Article 5 of the Trademark Act, "trademark use" generally requires three elements: | |||
| 1. | The use is for the purpose of marketing goods or services; | ||
| 2. | here is an objective act of using the mark; and | ||
| 3. | he manner of use is sufficient to cause consumers to recognize the “mark” as a source identifier. | ||
| The crux of this case lies in the third element. In this case, the court examined three distinct scenarios of use: | |||
| 1. | COMEBUY’s Official Website and Online Menus: | ||
| The COMEBUY website prominently displays the "COMEBUY" brand. The terms "Haishen" and "Haishen Milk Tea" appear beneath beverage photographs or within comprehensive price lists, listed alongside numerous other drink offerings. The identifier that is genuinely prominent and serves a brand function on the website is "COMEBUY." "Haishen" is listed alongside other drink names without special enlargement or visual emphasis. The overall layout leads consumers to understand "Haishen" simply as a beverage name. | |||
| 2. | Storefront Signage and Price Lists of Stores: | ||
| All storefront signs feature "COMEBUY" in prominent, enlarged fonts. "Haishen," "Haishen Milk Tea," and "Haishen Latte" appear on price lists around the ordering counter, beneath beverage images, or within the menu, arranged together with other beverage offerings. The court found that when average consumers enter a store, they identify which brand's shop they have visited based on the "COMEBUY" signage, and then select "Haishen Milk Tea" or other drinks from the menu. | |||
| 3. | Invoices, Beverage Cups, and Cup Labels: | ||
| Invoices issued to consumers bear the name COMEBUY, and the beverage cups also prominently feature COMEBUY. The terms "Haishen Milk Tea" and "Haishen Latte" on the invoices and cup labels serve to record the items purchased. The court held that these words objectively convey what the consumer purchased, rather than communicating the brand origin of the beverage. Consequently, the court held that, even though the word "Haishen" appears in the above scenarios, it does not constitute trademark use. During litigation, the plaintiff raised a counterargument: If a merchant is allowed to use another party's registered trademark as a product name, could a shop also launch drinks named "Ching shin (清心) Bubble Milk Tea" or "50 Lan Oolong Tea"? The court ruled that an analogy could not be drawn here. The stronger the distinctiveness of a trademark, the more readily consumers perceive it directly as a brand. "Haishen" is an existing term referring to gods over the ocean, water, or maritime safety in mythology. It exhibits lower inherent distinctiveness. However, both “Ching Shin” and “50 Lan” are well-known beverage chains in Taiwan, which possess high originality or have already attained widespread commercial recognition. Therefore, although the plaintiff obtained trademark rights in "Haishen," this does not entitle the plaintiff to exclude all third parties from using the word "Haishen" in every commercial context. Ultimately, the court held that the defendant used "Haishen Milk Tea," and "Haishen Latte" merely as product names rather than as indicators of the source of goods or services. Because actionable trademark infringement presupposes trademark use, and the defendant's conduct did not constitute trademark use, there was no trademark infringement. |
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| Conclusion: | |||
| Trademark law protects trademarks against unauthorized use as indicators of source for goods or services; it does not grant trademark owners a blanket monopoly over words across all commercial contexts. The mere presence of a registered mark on another party’s goods does not inevitably constitute trademark infringement. The court must first determine whether such use qualifies as "trademark use"; only if trademark use is established can trademark infringement potentially arise. | |||
| In determining whether a given use constitutes trademark use, courts generally consider: | |||
| * | The placement of the text; | ||
| * | Font size and graphic scale; | ||
| * | Whether the mark is deliberately rendered prominent (e.g., featured on storefront signs, advertising headlines, or store exterior decor); | ||
| * | Whether there are other primary identifiers better suited to indicate the source of the goods or services; | ||
| * | Whether the u intends to free-ride on the goodwill of another; | ||
| * | The inherent distinctiveness and reputation of the word itself; | ||
| * | Whether the overall manner of use aligns with trade practices within the relevant industry; and | ||
| * | How consumers would perceive and understand the designation in light of the totality of the circumstances. | ||
