萬國法律事務所

Two years ago, Paolyta Co., Ltd. started to sell PI ER Green Tea, a beer flavored green tea containing hops. The company also registered a trademark with the characters “PI ER” for beer, dark beer and alcohol-free drinks. The Taiwan Tobacco and Liquor Co. (TTLC) filed an opposition to the Taiwan Intellectual Property Office (TIPO) against the PI ER registration, arguing that PI ER is pronounced similarly to the English word for beer and that because the promotions for this drink all stress that this is a drink that tastes like beer, this mark will mislead consumers to believe that this drink is a beer. TIPO cancelled the PI ER trademark registration and Paolyta filed a complaint at Taiwan’s IP Court after its administrative appeal was dismissed by the Ministry of Economic Affairs. Paolyta claimed that PI ER was independently created by its company and is pronounced differently from the word beer. Paolyta asserted that Taiwanese consumers call beer “Pi Jiu,” which is the Taiwanese word for beer. Although the packing and the name of PI ER green tea is similar to beer, Paolyta argued that it is not possible that consumers will mistake the green tea for beer. Nevertheless, the Court disagreed and ruled that the PI is identical to the Pi of Pi Jiu and that it is pronounced similarly to the English word for beer. Thus, the Court cancelled the trademark registration for use with alcohol-free drinks. However, the Court reversed the administrative decisions and remanded the case to TIPO on the issue of use of the mark for beer and dark beer.