TIPS^®  Taiwan Intellectual Property Special

“JUS D’ORANGE” Trademark Dispute---Slavish Behaviors of the Clone

French brand “JUS D’ORANGE” has been selling clothing in Taiwan since 1991. It has not applied Trademark Registration for “JUS D’ORANGE” in Taiwan. The mark was subsequently registered by a Taiwan national, Lai. The French company initiated an invalidation action, hoping to acquire the trademark right.

Lai sent a written notice to a department store, in which there is a retailer outlet of “JUS D’ORANGE,” requesting the Department Store to cease selling “JUS D’ORANGE” products and reach a settlement in 5 days. However, around eight o’clock in the evening on the even date, Lai’s attorney, along with police force, entered into the “JUS D’ORANGE” retailer outlet with a search warrant, and several cases of clothing and merchandise were seized as counterfeiting goods.

Although the Trademark Law in Taiwan adopts the principle of “First in Time, First in Right,” bona fide prior use of a mark may continue after registration the mark by another. Therefore, the French company “JUS D’ORANGE” may continue to sell the products in Taiwan. Furthermore, the retailer outlet in the Department Store is a licensed distributor of the French company, which is the opponent of disputed trademark against Lai. The dispute is currently under the examination process by the TIPO, and the validity of Lai’s registration is uncertain. With respect to the search and seizure, the French company is considering to initiate an unfair competition action against Lai; the Department Store also reserved the right to bring an action for damages resulting from the search and seizure if it is later determined Lai’s trademark registration is invalid.

Due to the “First in Time, First in Right” principle, trademark squatters may apply for registration of famous brand names in Taiwan, and accuse the authentic distributors of suchbrands for counterfeiting, or demand lots of money for transferring the registrations or settlement from the distributors. Multinational companies and famous enterprises should be aware of these slavish behaviors of the clone once they decided to enter the Taiwan market.