E INK Deemed not Generic but Well-Known

published on 3 Feb 2017

The American e-paper manufacturer, the E Ink Corporation (“E Ink”), in a trademark infringement action, successfully stopped the opponent from using trademark “E INK” as a business representation and a specific domain name. The IP Court (“Court”) in both of the first instance and the appellate level granted E Ink's claims for monetary damage and injunctions.

E Ink has been engaged in the electronic paper display industry since the late 90'. As the leading and pioneering innovator of e-paper technology, its' products had been taking over 90 percent of the worldwide market share. In Taiwan, E Ink owns two registered trademarks, as shown in Fig. 1-2, in Classes 1 and 9 and also licenses its core technologies and patents to a local supplier. A while ago, E Ink discovered that a Taiwanese printing proprietor, Yi-Ying-Ke, registered a domain name  eink.com.tw and also used term “EINK” in its business services or printing products. E Ink filed an action of trademark infringement and was granted a favorable decision in the first instance. The infringer appealed the decision. 

In an attempt to persuade the Court of non-infringement finding, the Appellant based its argument on several grounds to challenge “E INK's” trademark quality or to defend itself. The grounds were genericness, lack or insufficiency of distinctiveness, fair use, absence of dilution, absence of likelihood of confusion, and absence of bad faith.

The Court first formulated a conclusion that “E INK” is a well-known trademark. In Taiwan, whether a mark is well-known depends on various factors including but not limited to a mark's associated marketing time span, volume of sales, market share, distinctiveness, commercial value, mass media coverage, etc. Traced back to the year 2000, “E INK” was registered for “visual display devices having electrophoretic display materials, etc.” in Classes 1 and 9. At the time when Appellant's “.tw”   version domain name was registered, E Ink had long before registered and used “eink.com” without country designation and also been supplying products to international enterprise such as Sony, Amazon, Hanvon, etc. to enjoy a significant amount of sales worldwide. In Taiwan, E Ink has been exposed in different sorts of information platforms accessible by both technological specialists and the general public. E Ink's e-paper products have even been a research topic of an academic thesis, let alone the fact that media has reported E Ink's important commercial events in a large scale. Therefore, the Court concluded that “E INK” is a well-known trademark.

The Court subsequently analyzed the basis of trademark revocation in response to Appellant's genericness argument. The Appellant alleged that the term E INK has been genericized for a core technology of electrophoretic display material demonstrating optical properties and therefore “E INK” might have become generic and possessed no distinctiveness as a trademark. Note the law prescribes that when a registered trademark has turned into a generic mark, term, or common shape for the designated goods/services, its fundamental ability to identify or direct to a genuine source of product is weakened. The mark is then subject to revocation.¹ The series of facts revealed that, against the Appellant’s argument, other e-paper manufacturers used various descriptions to indicate the same technology of “particles operating in a suspension solution” instead of using marks similar to “E Ink.” Also, they marketed their own products under different brand names. Therefore the mark “E INK” has not become a generic name for e-paper products or equivalent name of the electrophoretic displaying material solution. Thus, in view of “E INK's” distinctiveness and ability to indicate a specific and unique source of product, the genericness challenge was deemed groundless.

Next, the Court dealt with the question whether or not the Appellant's ownership of the domain eink.com.tw and the incorporation of “EINK” mark in the Appellant’s business representation were justifiable. As required, an act is deemed an infringement when there exists a likelihood of dilution of the distinctiveness or reputation of a well-known trademark.² Here, “E INK” had been held to enjoy well-known status as afore-explained. The Appellant used term “eink,” which was similar to “E INK” phonetically, visually, and conceptually in the core of its business operations. Given that both parties engaged in different industries where the Appellant was a traditional printing proprietor and E Ink was an electronic material supplier, they both provided goods/services aimed to deliver information by presenting text or image via information carriers. More specifically, the difference of said carriers may only and indeed imply a technical upgrade of adopted means, whereas the purpose of information delivery and circulation remains identical. Based on the foregoing reasoning and pursuant to Article 70(2) of the Trademark Act, the Court ruled that the Appellant’s use of term “eink” as business representation and in the eink.com.tw  domain name was deemed trademark infringement.

Furthermore, the Court investigated whether or not E Ink was entitled to restraining the Appellant from using similar or identical marks on Appellant's printed products such as journals, notebooks, calendars. The statute provides that using a mark which is similar to the registered trademark and used in relation to goods or services identical with or similar to those for which the registered one is designated, and hence creates a likelihood of confusion on relevant consumers would be infringement.³ Although the term “eink” used by the Appellant was not identical to “E Ink,” they were somewhat extremely similar due to the same number and order of consisting letters. Although the Appellant is in traditional printing business while the Appellee E Ink belongs to electronic industry, both businesses were seemly connected in daily life since they both served the purpose of delivering information by text and image. Relevant consumers with conventional knowledge might misconstrue the Appellant’s printing products bearing the “eink” term originated from the well-known E Ink company, or wrongfully identify that the two mark/terms' respective owner might be related in a certain contractual association such as license, subsidiary, franchise, or the like.  Term “eink” thus created likelihood of confusion and thus the Appellant infringed upon E Ink's trademark right.

Finally, the Court reviewed E Ink's unfair competition claim. Under the Fair Trade Act, no enterprise shall have any deceptive or obviously unfair conduct that is able to affect trading order.⁴ “E INK” had attained well-known status enjoying a certain level of economic value. Registration of “eink” in domain name might redirect a potential online buyer to access to Appellant's rather than E Ink's products. Obviously, the Appellant enhanced its own market efficiency by exploiting E Ink's reputation and fame. Such a free ride of other's good will would be an unfair conduct which is forbidden under the law.

According to the foregoing, the Court ordered that the first instance decision was of no error. Appeal was dismissed and decision was affirmed.

After the long efforts litigating this case, the level of fame of the “E INK” marks has also been endorsed by administrative agency by being collected in TIPO's directory for well-known trademarks.

for any questions relating to this topic, please contact us at  cjchen@tsailee.com.tw