In Taiwan, trademark infringement is not just a civil matter for damages, it also carries criminal liability! The Sodagreen trademark dispute serves as a lesson for the public. Whether you're an independent musician, a band, or any other type of artist, always remember that verbal agreements are not enough! Since trademark protection follows the "registration" principle, if you haven't registered your trademark, it is not protected. Everyone should be extra cautious!
The trademark dispute over Sodagreen has sparked public attention, especially after the band's former manager, Lin Wei-Zhe, announced that he was giving up the trademark. The question of who will eventually own the Sodagreen trademark has led to further discussions. In fact, whether you're an independent musician, a band, or any other type of artist, it's crucial to remember that verbal agreements are not enough, particularly since trademarks follow a "registration" system. If you haven't registered your trademark, it is not protected.
As for Wu Qing-Feng, who is not the owner of the Sodagreen trademark, whether his use of the name Sodagreen constitutes infringement depends on the provisions of Article 36, Paragraph 1, Item 3 of the Trademark Act. According to this law, if someone uses the same or a similar trademark in good faith for identical or similar goods or services before the application date of another party's trademark registration, they are not bound by the rights of the registered trademark owner.
Based on this, since Wu Qing-Feng and others have been using the name Sodagreen for their performances since 2001, it should be considered as good faith usage. Furthermore, since their manager, Lin Wei-Zhe's music agency owns the trademark, during the valid period of their management contract, the use of Sodagreen by Wu Qing-Feng and the other band members, even without explicit authorization, would not constitute trademark infringement.
Since the management contract between Lin Wei-Zhe's music agency and Wu Qing-Feng, as well as its renewals, never included any provisions regarding the registered trademark, and the use of the band name or stage name is not equivalent to a registered trademark, the court ruled that the registered trademark is unrelated to the management contract. It also determined that there was no "name borrowing" or "trust relationship" between the parties.
Furthermore, the court also accepted Lin Wei-Zhe's music agency's argument that, after experiencing some success in managing the entertainment business, it independently sought legal assistance in 2008 to register the disputed trademark under the Trademark Act, a move that is aligned with commercial practices. As a result, the court recognized Lin Wei-Zhe's music agency as the actual owner of the Sodagreen trademark.
In addition, since the Sodagreen trademark has been published for over ten years, it has already surpassed the five-year evaluation period stipulated in Article 58 of the Trademark Act. As a result, Wu Qing-Feng and others can no longer contest the trademark.
Additionally, between May 21 and June of 2019, Lin Wei-Zhe's music agency continued to release combined CD products featuring the songs "Visuals and Illusions in the Air," "Flying Fish," and "Believe in Music," all marked with the Sodagreen.
Do Wu Qing-Feng and others have the "right of name" or any other rights to Sodagreen?
In this regard, the court decided that the band members' names, which are Ho Jing-Yang, Shih Jyun-Wei, Wu Qing-Feng, Shie Shin-Yi, Gong Yu-Chi, and Liou Jia-Kai, are unrelated to Sodagreen. Moreover, they never specifically explained the legal relationship by which they collectively own the name Sodagreen. Additionally, since the band's lineup has changed frequently over time, most consumers cannot associate the band members' names with Sodagreen. Furthermore, Taiwan's Trademark Act follows the "registration" principle, meaning that trademark protection is not contingent upon prior use but rather depends on the registration application documents. The court also cited a previous ruling stating that Taiwan's Trademark Act adopts a “registration” system, rather than a “use” system. To acquire trademark rights and exclude others from competing use, one must file a registration application with the competent authority. Even if the trademark has been used previously, if it has not been registered, it will generally not be protected by trademark rights.
Therefore, since Lin Wei-Zhe's music agency registered and obtained the Sodagreen trademark and has publicly used it for over ten years, surpassing the five-year evaluation period stipulated in Article 58 of the Trademark Act, the court's recognition of Lin Wei-Zhe's music agency as the rightful owner of the Sodagreen trademark is well-founded.
Can Wu Qing-Feng and others request the transfer of the Sodagreen trademark?
After reconsidering the relevant evidence, the court determined that neither the management contract nor its renewals included any provision for the application or registration of the Sodagreen trademark. The court also recognized that Lin Wei-Zhe's music agency registered the trademark to protect its own commercial interests and had publicly been recognized as the trademark owner for over ten years. Based on this, the court concluded that Lin Wei-Zhe's music agency's acquisition of the Sodagreen trademark was not without legal basis and did not constitute the unjust enrichment. Therefore, the court ruled that Wu Qing-Feng and others' request for the transfer of the Sodagreen trademark was without merit.
Recently, there has been a discussion among the members about whether they can reclaim the Sodagreen trademark after the former manager, Lin Wei-Zhe, announced that he has decided to give up ownership of the trademark and wishes the name a better future. In this regard, it is important to note that since the trademark system follows a "registration" principle, the abandonment of a trademark also requires proper documentation. For example, Article 45 of the Trademark Act stipulates that a trademark owner must submit a written declaration to the competent trademark authority in order to abandon their trademark rights. Therefore, trademark abandonment requires a formal written application to the Intellectual Property Office to be legally effective.
Additionally, if one wishes to transfer a trademark to another party, certain procedures must be followed. For example, Article 42 of the Trademark Act stipulates that a trademark transfer is not valid against third parties unless it is registered with the competent trademark authority. Therefore, when transferring a trademark, both parties must present a transfer agreement and other relevant documents to the Intellectual Property Office to complete the transfer registration, making it effective against others. In summary, whether acquiring, abandoning, or transferring trademark rights, a written application must be submitted to the Intellectual Property Office. It cannot be done simply through verbal agreement.
In conclusion, the dispute over the Sodagreen trademark can serve as a valuable lesson for cultural and creative artists. Whether you're an independent musician, a band, or any other type of artist, always remember that verbal agreements are not sufficient. Since the trademark system follows a "registration" principle, without trademark registration, there is no protection.
At the same time, unless the management contract includes provisions regarding the ownership, authorization, or use of the trademark, the trademark rights will not be affected by changes in the management contract.
More importantly, trademark infringement in Taiwan is not just a matter of civil damages; it also carries criminal liability. The public should be especially cautious about this!
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