Recently, the well-known international group “soda green“(蘇打綠) in Taiwan (its members include Wu Qingfeng(吳青峰), He Jingyang(何景揚), Liu Jiakai(劉家凱), Xie Xinyi(謝馨儀), Shi Junwei(史俊威), Gong Yu Qi (龔鈺祺) (the “Appellant”), before asking their former manager Lin Weizhe (the “Respondent”) to return the trademark of “Sodagreen” (the “Disputed Mark”) occupied by Lin Weizhe Music Club (林暐哲音樂社). When the case was appealed to the Intellectual Property and Trade Court (the “Intellectual Property and Trade Court”) in Taiwan, the panel held that the trademark “Sodagreen” had been applied for, advertised , maintained, extended or transferred within the last ten years. years. These are all operated by Lin Weizhe Music Club and Lin Weizhe Music Club Co. (林暐哲音樂社有限公司), Ltd. Thus, this article will analyze trademark litigation concerning the judgment rendered by the Intellectual & Commercial Property Court.

The contested trademark “Sodagreen”

The fact of the matter

Since “Sodagreen” was recorded in 2003, the constituents of the band have not changed for 19 years. “Sodagreen” was jointly devised and named by the caller and used as the group name. In terms of long-term contribution, “Sodagreen” has become the caller’s equal, which means forming an inseparable relationship. Further, the “Sodagreen” and its trademark or other rights (eg, right name) derived from the strip are jointly owned by the appellant by contract.

One of the group’s members: Wu Qingfeng claimed that he created the disputed mark. Mr. Wu is the lead singer of the group. In consideration of the fresh, lively and young audience, the Chinese and English and the positions of each text were specially arranged to be created by handwriting, and the six plaintiffs were the authors. The caller claimed that the pop music industry not only had consistent ratings of “Sodagreen”, but also left a deep impression on his mature performance and popularity.

But, the Respondent (Mr. Lin) believes that the registration of the contested mark was obtained by the Respondent independently in accordance with the Trademark Law. Furthermore, the process of applying for registration, transfer or extension of the contested trademark is entirely requested and maintained by him, without any procedural or substantive defects, and has been in operation for more than 10 years to date, the general public, consumers thanks to the advertising system, it can be known that the respondent is the owner of the contested mark.

Finally, the registration of the disputed mark has exceeded the legal period of 5 years required for the evaluation. Thus, the appellant can no longer challenge whether the challenged mark should not be registered or should be revoked, nor can it be challenged without the consent or unknown consent of the members of the Band. Therefore, it is unreasonable to claim that the applicant’s request for transfer of the contested mark.

Analyze the litigation strategy adopted by the appellant

1. The appellant used the “management contract” as the ground for the application to register the contested trademark right of the respondent;
2. The appellants allege that they have the name right in the trade-mark “Sodagreen” and other trade-mark rights thereof;
3. The appellant follows article 541 of the Civil Code (the right of the person appointed to apply on his behalf belongs to the person who appointed, i.e. the appellant), article 177 (Management of the case) and article 184 of the Civil Code. Law (Anyone who, intentionally or through negligence, has infringed the rights of others is required to repair the resulting damage. The same rule applies when the injury is done intentionally in a manner contrary to the rules of morality.).
4. The appellants used the legal relationship and the fiduciary relationship after the termination of the management agreement (the right to seek restitution of the fiduciary property) as the basis of their request to transfer the disputed mark;
5. The appellant requested the transfer of the “Sodagreen” in the name of the registered relationship as the basis for requesting the transfer of the disputed mark.

The Intellectual Property and Commercial Court’s response to the above litigation strategy

The court held that the manager’s or commercial agent’s contract and its renewal could not be the reason for the respondent’s disputed trademark application. The court compared the timing and content of signing the “Consent to Trademark Registration” and the “Management Agreement and its Renewal”, and heard that the Respondent applied for the disputed mark on August 3 2007 and March 5, 2013. , respectively. This moment has nothing to do with the manager’s contract signed in 2004 and this contract signed on December 6, 2007.

By further comparing the contents of “Consent to Trademark Registration” and “Consent to Disputed Manager Agreement and its Renewal”, it can be seen that “Consent to Trademark Registration” relates to the disputed trademark , and the meaning is clear, while the “Management Agreement and its renewal” is not a single word in the text that mentions “trademark”, so it is not related to the disputed mark. The appellant should not disregard the “Consent to Trademark Registration” signed by them and misrepresent the disputed management contract as the basis for requesting the transfer of the mark. As this article mentioned at the beginning, none of the band members named themselves “Sodagreen”, and the appellant has not yet specified the legal basis on which they “share” the term “Sodagreen”. Claims to the right to name, personality, etc. are not admissible.

Second, the appellants have presented no concrete evidence to prove that they “jointly agreed” to name, personality, trademark or other rights. The appellant’s testimony in both trials was capricious. One was that “Sodagreen” was “commonly designed by Wu Qingfeng and Shi Junwei”, and the other was that it was “Wu Qingfeng’s creation” or “It was jointly designed by all members”, etc. ., obviously cannot prove that the appellants share the term “Sodagreen”.

Moreover, the content of the manager’s contract and its renewal have nothing to do with the application for registration of the disputed mark. The appellant refrains from using the management contract and its renewal, which in no way stipulated the registered trademark, invoking article 541 al. 2 of the civil art to request the assignment of the contested mark.

Third, the appellant first claimed that the Lin Weizhe Music Club was managing the disputed trademark for him following the management contract, borrowing other people’s name or trust registration, etc. But when he invoked the provisions of article 177 of the civil law, he changed to claim that the respondent did not have enough discretion in the management of the case, so it is in accordance with the subjective intention of unlawful management and contradicts itself.

Fourth, the Respondent was also legally assigned the contested mark of Lin Weizhe Music Club. Therefore, the respondent obtained the contested mark not without legal reasons, and the appellant did not specify the prejudice suffered as a result. Indeed, the appellant complied with article 179 of the civil law which stipulates that the request will not be accepted.

Finally, although the appellant alleges that the respondents are the registered candidates, they (the appellants) are the holders of substantive rights. Respondents do not transfer the registration of the mark and thereby infringe “trademark rights” and infringe the right to obtain, register and implement the mark. However, the contested mark has been legally assigned or has been the subject of an application for registration by the respondent and is the legal owner of the mark. The applicant is not the owner of the contested trade mark right.

In summary, the Manager’s contract and its renewal have nothing to do with the registered mark, and the respondent never established a “relationship of trust” with the appellant for the disputed mark. There is no legal reason for the relationship of trust to require the respondent to transfer the disputed mark.

Although the appellant requested the transfer of the trademark right on the basis of the registration relationship under the appellant’s name, the appellant only listed several claims asking the respondent to transfer the contested trademark based on the same reason. However, after the respondent pointed out that there was no reason for his request to register under his name, and even the judgment rendered by the appellant was no longer sufficient to prove that the case was not not registered under his name, the caller changed his tone and said he “does not advocate registration under his name” and made his remarks. The name was changed to “Trust Registration” during oral argument. The court held that, based on the fact that the contested mark had been registered for more than ten years and eight years respectively, the appellant had also issued a letter of consent and that the respondent had continued to use and manage the contested mark for itself. Therefore, the court could not accept the appellant’s grounds of appeal.

Consumers or the general public only know “Sodagreen” but not the “Band”?

In this case, the court proved that the general public cannot associate the word “Sodagreen” with the “Group” using reasons such as “can someone spell all the names of the members without Google?” and “what other Sodagreen members think now”. Therefore, it is unreasonable for the Band to claim that “Sodagreen” is equivalent to the identification of the 6 people. Thus, the appeal was dismissed and the legal costs at second instance were borne by the appellant.

As follows, whether it is a happy ending or not?

Luckily, the band didn’t break up in the end. Instead, he uses the “demolition method” to rebuild his band’s momentum. The new group “Yu Ding Mi(魚丁糸)” is formed by the members, and the “nicknames” of the members have been changed to “Sunrise(日出)”, “Xiangwo(香我)”, “Banu(八女)”, “Ketian(可田)”, “Hogdu(豕豆)” and “Jinba(金八)”.

The following good news is, of Lin Wei-Zhe’s public letter saying that he has decided to relinquish ownership of the “Sodagreen”. But that doesn’t mean that “the band” can own the “Sodagreen” directly. Even though Mr. Lin can relinquish his trademark right, he only needs to complete the trademark relinquishment application form to meet the legal requirements. Otherwise, Mr. Lin’s words seem to have no substantive meaning. Except for the abandonment, Mr. Lin can choose to transfer the “Sodagreen” to the band. In a word, after this kind of procedure of abandonment or transfer of its trademark rights. The group can obtain the right to reuse the “Sodagreen”. But this does not mean that “the band” had obtained this trademark right. In other words, the “Sodagreen” is required to appeal the revocation or complete the trademark transfer process with Mr. Lin.

For the original text in Lexology, go to here and IPRdaily, Fan, Kuo-Hua & Ng, (Kitson) Chun-Kit, you can access here.