TIPS^®  Taiwan Intellectual Property Special

Taiwan Updates

Taiwanese “Hat Family” Knocked Out Japanese “Hello Kitty” 

Taiwan Supreme Court has recently issued a final decision that a “bear” and a “cat” are two dissimilar marks that would not cause confusion. Hence, the Hat Family’s bear mark created by a Taiwanese company does not infringe the famous Hello Kitty trademark owned by Sanrio.

A series of artistic creations in the name of “Hat Family” was created by a Taiwanese company in 1998, and the Hat Family’s bear image was registered at the United States Copyright Office. In 2000, the copyright owner assigned the rights to an image company (also owned by the same owner), and licensed the mark to stationary, paper, and printing companies for reproduction and sales. The Japanese company, Sanrio, believes that characters of “Hat Family” is confusingly similar to those of “Hello Kitty” and sent warning letters to the licensees of “Hat Family,” accusing unfair copying in violation of Taiwan Fair Trade Law, which resulted in the termination of the licenses between the image company and its licensees. Therefore, the image company filed a lawsuit against Sanrio.

Hat Family’s copyright owner claimed that the company rightfully owned the copyright of the bear-related artistic productions, and that Sanrio should not interfere or stop the company from licensing the mark. The image company requested that in accordance to the Copyright Law, Sanrio should compensate the damage of NT$1,000,000, and publish the entire contents of the decision in the newspaper. During the past five years, the courts’ decisions were all in favor of Sanrio. Nevertheless, the Supreme Court’s final decision overruled the lower courts’ decisions. The Supreme Court concluded that bears and cats are clearly dissimilar, and considered that the bear images of Hat Family does not infringe Sanrio’s Hello Kitty. The Supreme Court ruled that Sanrio needs to pay the compensation of approximately NT$780,000, and publish the Supreme Court’s decision along with the reasoning in an appointed magazine, and cover the litigation fees for all three incidents.

Pictures of Hat Family’s “bear” image and Sanrio’s Hello Kitty