TIPS^®  Taiwan Intellectual Property Special

VISTA v. VISTA S-12 Similar Goods on Trademark Infringement

By Judgment (85) Chung-Su No. 185, the Hsinchu District Court found that UMAX Data Systems, Inc. ("UDS") infringed the trademark of Vista Technology Co. Ltd. (“Vista”) and further ruled that UDS should pay to Vista NT$12,789,000 (approximately US$412,548) in damages.

According to the court, “VISTRA” and “VISTA” are trademarks registered by Vista for its computer and accessories products. Without Vista’s consent, UDS affixed “VISTA” onto the packaging of the scanners manufactured by UDS for sale in domestic and foreign markets. As UDS prominently displayed on the packaging of its products the English letters “VISTA”, followed by the letters of “S-12”, an ordinary consumer could well perceive that “VISTA” was used by UDS as a trademark and that “S-12” referred to the model S12 of scanners manufactured by UDS. As “VISTA” and the English portion of Vista’s registered trademarks “VISTRA” and “VISTA” are different by a few letters only and have similar pronunciations, the marks used by the two parties, when place and observed at different locations, may cause an ordinary consumer to confuse and mistake. Therefore, the court found that UDS’s use of the mark “VISTA” constituted trademark infringement.

Although the UDS-manufactured scanners discovered by Vista sold only for NT$21,315 each, according to Item 3, Paragraph 1 of Article 66 of the Trademark Law, a trademark owner may claim damages in the amount of 500 to 1,500 times of the retail price of the trademark-infringing merchandise seized. In this case, the court ruled that, despite the difference in use and function between the trademark-infringing scanners manufactured by UDS and the motherboards and monitors sold by the plaintiff, as the scanner is a computer accessory equipment and used by a consumer in conjunction with a computer, the markets for the two products indeed overlapped. Therefore, the court ruled that UDS should pay 600 times of the retail price of the trademark-infringing product i.e. NT$12,789,000 in damages.

The high amount of damages awarded in this judgment has attracted attention in the computer and high-tech industries. UDS has brought an appeal against the judgment and the case continues to evolve.