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COURT BANS USE OF "YAHOO" IN COMPANY NAME
The US company Yahoo! Inc. brought a civil action in Taipei against a local traveling agent Ya-Hu Travel, alleging that the latter's use of the Chinese characters "雅虎" ("yahu"—the same characters as are used in the Chinese name of Yahoo! Inc.) as the distinctive portion of its company name violated Article 20 Paragraph 1 Item 2 and Article 24 of the Fair Trade Law (FTL). Finding in favor of the plaintiff, the court prohibited the defendant from using characters identical or similar to "yahu" as the distinctive portion of its company name, and ordered it to register a change of name with the Department of Commerce, Ministry of Economic Affairs (MOEA). The main grounds for the judgment are as follows:
Documents submitted in evidence by the plaintiff, including its service mark registration, its Tai-wan subsidiary's registration data, internal sta-tistical information, news media reports on sur-veys of public recognition of the plaintiff's Chi-nese name, market research data, copies of the plaintiff's "Yahoo! Travel" web pages, and ac-cess statistics and brief information on the "Ya-hoo! Travel" web site, were sufficient to show that the plaintiff had used "Yahoo!" as the dis-tinctive portion of its company name since 1994, and that its web site name and Internet domain name were distinctive and sufficient to identify its business or services, and were therefore eli-gible for protection under the FTL.
The plaintiff had begun operating its "Yahoo! Travel" web pages in November 1997. The de-fendant had been founded and registered as a company in November 1999. "Yahu," as used in the distinctive portion of the defendant's com-pany name, was highly similar to the plaintiff's well-known mark "Yahoo!", and the defendant used the Internet to provide travel-related ser-vices identical or similar to those provided by the plaintiff. This was likely to cause confusion among consumers. The plaintiff used the words "Yahoo!" in English and "yahu" in Chinese on its web sites to identify its services, including the booking of travel products and the provision of travel information. The defendant also identified its travel services with the characters "yahu", and this did indeed cause confusion and misidentifi-cation among consumers, so that they mistakenly accessed the defendant's web site. According to data from a market survey carried out by the plaintiff, 44% of those polled believed that Ya-Hu Travel was or might be related to Yahoo! This showed that the mere use by the defendant of "yahu" as its company name was sufficient to confuse consumers.
On its establishment, the defendant had regis-tered with the MOEA, using "yahu" as the dis-tinctive portion of its company name according to Article 18 of the Company Law. However, said Article 18 of the Company Law did not touch upon the issue of unfair competition, and cannot be used to shield the defendant. Since the plaintiff had been established prior to the de-fendant, with a name known to the relevant public, the use of the name "yahu" by the de-fendant was sufficient to cause confusion, take improper advantage of the plaintiff's reputation, and create mistaken associations in people's minds. The defendant could not exclude the application of the FTL by asserting that such use did not violate the Company Law.
Finally, Article 24 of the FTL was a general provision on unfair competition, whereas Article 20 was a specific provision; the two articles were complementary in scope. The defendant's ac-tions violated Article 20 Paragraph 1 Item 2 of the FTL, and, therefore, it was not necessary to consider whether they also violated Article 24.