The issue of Eveready involves several levels of counterfeiting. The company, a division of the Union Carbide Corporation has been established for over 100 years. Its famous logo featuring a black cat inside a red trapezoid-shaped background has become a world-wide symbol of the battery.
In some of the suits brought by the company the prosecution process was quite elementary. These involved companies which completely copied the Eveready product. In these cases the police immediately acted, arresting the culprits who then were sentenced to six month prison terms.
Other cases were somewhat more complex, being accusations by Eveready that these imitators were approximating their established trademark in shape, color and design. This ploy would successfully confuse the unwary consumer who could mistakenly assume it was an Eveready product. Among the four brand names involved in these suits were: Everyday (which was sentenced to five months), Realready (sentenced to six months in the criminal suit, the civil suit still not completed) and two products of the Hwalien Corporation, Greyhound and Olympic.
The company, under the directorship of Shen Hsin-yao, while found guilty and sentenced to nine months was not willing to concede the case. Shen felt that his company, well-known throughout the nation did not need to counterfeit in order to succeed. His domestic success was built on over 30 years of experience which included a domestic brand. International orders, he added, were usually OEM and so were produced according to buyer specifications. Armed with this defense, Shen moved forward with an appeal suit in the supreme court.
The presiding judge ruled in Shen's favor finding the shape sufficiently different (a dog instead of a cat) and the name distinction (greyhound) ample enough evidence for consumers not to be confused. The court therefore overturned the initial conviction inciting the ire of Eveready. This led to a protest from the American company which brought forth evidence citing that Shen had previously in 1977 approached the Central Standards Bureau with the intent of registering the same trademark. The bureau refused the request. This, Eveready countered, should be sufficient enough basis for ruling against Shen's product. Shen explains that at the time he was not really aware of the method of appeals and that he continued to manufacture the battery for two years without any outside protest. It was only until the ruling in the Eveready suit that he sought the appeals court to clear the issue. Since this was an appeal decision, the final verdict could not be overturned. Eveready continued to protest and then went to the Control Yuan (one of the five branches of the government) to present its arguments. The Control Yuan upheld the power of the courts stating that the court system had the independence to make decisions and that the final ruling had to be adhered to.
The other product in the initial suit, Olympic, which was also part of Shen's company Hwalien, was then the target of Eveready. This time Eveready sought to use private prosecution in the case instead of the court-appointed prosecutor. This idea was stymied by the law which stipulated that foreign companies not registered in the nation could not use private prosecution in the courts. It was a matter for Eveready to follow the old adage "when in Rome do as the Romans do."
As most stories go, this one had its fair share of twists and turns. In March of 1983, the second judicial court announced that under conditions from the ChineseAmerican Friendship Commercial Treaty American companies could use private prosecution in court cases.
In this case it came down to the court to decide if the color and shape were violating Eveready's trademark. The defense argued that such elusive determinates such as color were not the sole domain of any single company but were subject to popular trends. The court exonerated Olympic from any infringement but in the end it cost Shen US$50,000.
Shen concludes that the case taught him three valuable lessons: He is careful to check all OEM for the sufficient proof of registration, he will pay closer attention to the trademark registration announcements from the Standards Bureau and he will market his own registered trademarked product the "Robot". Eveready, when commenting on the process of the litigation expressed complete satisfaction.
(Gerald Hatherly)
[Picture Caption]
Pictured on the left are two of the "real brand" Eveready batteries. The others are those goods accused of counterfeiting the Eveready trademark. Among the group, REALREADY (fifth from right) and EVERYDAY (third from right) were judged by the court to constitute counterfeiting of trademark rights. They were both given sentences. The important aspects of the remaining products sued-the name and shape were not judged to be similar to Eveready's so were exonerated from any wrongdoing.
