The Decision

The Supreme Court recently reversed a decision issued by IP Court based on it did not consider the appellant’s important arguments. The case involved the appellee(defendant) taking pictures of the goods brought back from Japan in packaging bags with the words "NEFFUL”, and then uploading the pictures to his Shopee shopping platform for display and sale.

The appellant claimed that in addition to the disputed designed trademark, the pure word mark "NEFFUL" is also registered in Taiwan, which is exactly the same as the six English letters of "NEFFUL" that appear on the package of the goods in dispute by the appellee.

The original judgment issued by IP Court disregarded this, but only based on the grounds that the appellee did not infringe the disputed designed trademark, which was unprepared and illegal for its own reasons.

The Comment of Ching-I Lu:

1. In this case, the first thing to be identified is whether the product sold by the appellee(defendant) is really a parallel imported good.

If the goods belong to parallel imports and are resold in original packaging, the trademark on the product body is not infringing at all.

If the goods sold by the defendant are not parallel-imported goods, based on territorialism, NEFFUL’s Taiwan trademark right belongs to the Taiwan trademark owner. Even if the defendant’s importer has the legal trademark right to register the NEFFUL trademark in Japan, it still infringes Taiwan’s NEFFUL trademark rights.

2. The rest is the judgment of whether the two designs are similar, and whether there is a risk of confusing consumers. After comparison, the IP Court of this case believed that the defendant's usage pattern was not similar to the overall design pattern of Registration No. 0171681, so it believed that there was no risk of confusion, and it did not constitute infringement.

3. The reason why the Supreme Court reversed the original judgment, in this case, was that the plaintiff had proposed other undesigned NEFFUL pure word trademark lists, which were completely the same as the six English letters of "NEFFUL" that appeared on the package of the goods in dispute by the appellee. It may cause confusion and mislead consumers.