Administrative
Well-Known Marks & Dilution
2025
Well-Known Mark Cross-Class Protection · Related Goods Determination
IP and Commercial Court·114-Xing-Shang-Su-9·First instance
Barbecue grills and charcoal were held closely related to the well-known soy-sauce mark "Wan Ja Shan" because the goods are used together in the same barbecue setting. Cross-class use created a likelihood of confusion and risked diluting distinctiveness, and the filing was a bad-faith attempt to free-ride on reputation, so cancellation was upheld.
Administrative
Procedure, Evidence & Jurisdiction
2025
Trademark Agent Registration · Filing Procedure Determination
IP and Commercial Court·114-Xing-Shang-Su-17·First instance
The statutory "10 cases per year" requirement for trademark agent registration counts only matters that independently initiate a statutory procedure — corrections and fee payments within the same application cannot be counted twice. The threshold is a proportionate means of securing professional competence and does not infringe the right to work.
Civil
Damages, Liability & Remedies
2025
Joint Infringement Damages · Retail Unit Price Multiplier
Supreme Court·114-Tai-Shang-452·Third instance
The Supreme Court held that joint-infringement damages are calculated on the infringers' total gains without deducting internal costs. The retail-price multiplier must be applied to each product's own unit price, subject to the court's power to reduce a grossly excessive award, and a corporate plaintiff may also claim non-pecuniary damages for harm to business reputation.
Civil
What Counts as Trademark Use
2025
Religious Ritual Services · Trademark Use Determination
IP and Commercial Court·114-Min-Shang-Su-12·First instance
Trademark rights take effect only from the date of registration publication. A temple's use of the name in documents and social posts merely recorded religious rituals, with no typographic emphasis, so it did not function as an indicator of origin and was not trademark use.
Criminal
Criminal Liability & Intent
2024
Trademark Crime · Mens Rea Determination
IP and Commercial Court·113-Zhi-Yi-52·First instance (summary offence)
The defendant had used the device with staff authorisation during the partnership, and the mark was only registered three years after the split, so he could not have foreseen infringement. Complainant testimony conflicted with labour-insurance records, so no subjective intent was found and the defendant was acquitted.
Criminal
Criminal Liability & Intent
2024
In-Store Sale of Infringing Goods · Knowledge Determination
IP and Commercial Court·113-Xing-Zhi-Shang-Yi-53·Second instance (summary offence)
The operator of a mixed-format store enjoys the whole profit and management control and cannot disclaim responsibility by saying he "only handled the drinks". A "parody" device that creates a highly similar overall impression still infringes, and the court convicted for selling counterfeit goods under Article 97.
Administrative
Ownership, Assignment & Licensing
2024
Mark Owner Death Extinguishes Right · Prior Use Claim
IP and Commercial Court·113-Xing-Shang-Su-67·First instance
Where a natural-person proprietor dies leaving no heir, the trademark right is extinguished as a matter of law and any authorised distributorship lapses with it. Reselling another party's goods does not identify the reseller's own origin and cannot found a prior-use claim.
Administrative
Likelihood of Confusion
2024
Likelihood of Confusion · Refusal of Registration
Supreme Administrative Court·113-Shang-142·Third instance
In a composite word-and-device mark the wording carries the core identifying function, and similarity of services is assessed against the designated scope of registration rather than actual business activity. "SMILE" was merely descriptive of a surgical procedure and fame was not proved, so refusal was upheld.
Criminal
Criminal Liability & Intent
2024
Forwarding Infringing Goods · Aiding Sale Liability
IP and Commercial Court·113-Xing-Zhi-Shang-Yi-61·Second instance (summary offence)
The defendant supplied his account and repeatedly received and forwarded counterfeit Chanel goods on instruction. Knowing they might be infringing and continuing regardless amounted to conditional intent, establishing aiding and abetting the sale of infringing goods.
Criminal
Fair Use & Other Defences
2024
Trademark Use Determination
IP and Commercial Court·113-Xing-Zhi-Shang-Yi-63·Second instance (summary offence)
The packaging led with the defendant's own brand "CREND" as the main visual, while the wording at issue was not emphasised and described an effect commonly claimed for skincare products. This was good-faith descriptive use rather than trademark use, and the defendant was acquitted.
Civil
Fair Use & Other Defences
2024
Good-Faith Prior Use Determination
IP and Commercial Court·113-Min-Shang-Su-45·First instance
Good-faith prior use is measured against the trademark application date. The defendant had used the name in good faith on product packaging before that date with no intent to free-ride, so the registered right could not be enforced against him.
Administrative
Bad Faith & Prior Rights
2024
Bad-Faith Pre-emptive Registration · Prior Use
IP and Commercial Court·113-Xing-Shang-Su-64·First instance
Cross-checking the timeline of both parties' fan pages, press coverage and a corporate name change, the court found the applicant knew of the other side's prior-used mark through direct competition and filed in bad faith, cancelling the registration under Article 30.
Administrative
Likelihood of Confusion
2024
Similarity of Goods Determination
IP and Commercial Court·113-Xing-Shang-Su-65·First instance
Although the marks were identical, computer software and computer carrying bags differ in function, materials and trade channels. They are not similar goods and no confusion arises — similarity turns on whether the goods are complementary or dependent, not on sharing a retail channel.
Criminal
Fair Use & Other Defences
2024
Descriptive Fair Use · Trademark Use Determination
IP and Commercial Court·113-Xing-Zhi-Shang-Yi-7·Second instance (summary offence)
The defendant prominently displayed his own brand and used a bow-drawing graphic only as a visual explanation of the product name, under a valid stock-image licence. This was good-faith descriptive fair use, not trademark use, and the acquittal stood.
Criminal
Fair Use & Other Defences
2024
Descriptive Fair Use Determination
IP and Commercial Court·113-Xing-Zhi-Shang-Yi-55·Second instance (summary offence)
Following industry practice, the first character of the company name was boxed on export cartons purely for warehouse identification. It did not sit alongside the product name, the customs declaration recorded no trademark, and marketing purpose was absent, so the use was descriptive fair use.
Civil
Fair Use & Other Defences
2024
Fair Use vs Good-Faith Prior Use Determination
IP and Commercial Court·113-Min-Shang-Shang-20·Second instance
On appeal the court found that use of the mark from 2009 predated the application date, establishing good-faith prior use. The plaintiff failed to prove the mark was well known, and the court declined to apply a repealed provision by analogy, reversing to a finding of no infringement.
Civil
Likelihood of Confusion
2024
Chinese-English Mark Similarity · Trademark Use
IP and Commercial Court·113-Min-Shang-Shang-11·Second instance
The Chinese characters at issue are the standard rendering of MASTERCARD and are therefore similar. Knowledge arising from a business relationship is not implied consent to licence, and adopting a well-known mark as the distinctive part of a company name while running a similar business is deemed infringement.
Civil
Damages, Liability & Remedies
2024
Damages Calculation · Cost & Expense Proof
Supreme Court·113-Tai-Shang-274·Third instance
The Supreme Court held that cost and expense receipts tendered by an infringer are not wholly unrelated to the facts in issue, so the lower court could not prejudge them as unnecessary and refuse to investigate. Calculating gains on gross sales revenue alone misapplied the law, and the case was remanded.
Administrative
Well-Known Marks & Dilution
2024
Well-Known Mark Protection · Refusal of Registration
IP and Commercial Court·113-Xing-Shang-Su-9·First instance
Fame is assessed by whether relevant consumers in Taiwan generally knew the mark at the filing date of the mark at issue. High foreign turnover and a global website were not enough to prove fame in Taiwan, so the TIPO cancellation decision was set aside.
Criminal
Fair Use & Other Defences
2024
Trademark Use & Fair Use Determination
IP and Commercial Court·113-Zhi-Yi-10·First instance (summary offence)
Judging the packaging's overall visual hierarchy, the wording at issue appeared in small type tightly interleaved with ingredients and specifications, functioning as explanatory text while a different brand carried the main visual. The parties also served very different markets, so intent to infringe was not made out.
Criminal
Criminal Liability & Intent
2024
Import of Counterfeits (Blind Parcel) · Infringement
IP and Commercial Court·113-Zhi-Yi-35·First instance (summary offence)
Article 97 requires actual knowledge, that is, direct intent. The defendant bought blind parcels by the kilo and had not opened them before customs seizure, so only conditional intent existed and no offence was committed — though the counterfeits were still forfeited.
Criminal
Procedure, Evidence & Jurisdiction
2024
Limit on Expanding Charged Facts on Appeal
IP and Commercial Court·113-Xing-Zhi-Shang-Yi-31·Second instance (summary offence)
Under the principle that a court tries only what is charged, the prosecutor may not expand the charged facts on appeal through the notice of appeal or supplementary submissions so as to bring additional marks within the scope of trial. Additional charges must follow the statutory procedure.
Criminal
Criminal Liability & Intent
2024
Trademark Infringement · Subjective Intent
IP and Commercial Court·113-Xing-Zhi-Shang-Yi-1·Second instance (summary offence)
The defendant's packaging design predated the complainant's application, his own product already sold well so he had no motive to free-ride, and the complainant's mark lacked real recognition. Intent could not be proved, and as the offence does not punish negligence the acquittal stood.
Administrative
Ownership, Assignment & Licensing
2024
Trademark License Formality · Use Determination
IP and Commercial Court·113-Xing-Shang-Su-15·First instance
A trademark licence is not a formal contract — an oral agreement takes effect. Witness evidence of OEM production and continuous sales through physical channels established genuine use, but registration was still revoked for those designated goods where no evidence of use was filed.
Administrative
Genuine Use & Non-Use Revocation
2024
Trademark Use Identity Determination
IP and Commercial Court·113-Xing-Shang-Su-4·First instance
Adding foreign wording and a device to the mark as actually used altered its main identifying features and destroyed identity with the registered mark. Use by a company is also not use by the proprietor, so revocation for three years' non-use was lawful.
Criminal
Criminal Liability & Intent
2024
Mens Rea Element · Art.95 vs Art.97 Application
IP and Commercial Court·113-Xing-Zhi-Shang-Yi-14·Second instance (summary offence)
Deliberately covering the mark with stickers was itself decisive proof of knowing infringement. Use for marketing purposes under Article 95 absorbs the subsequent display and sale under Article 97, so the acquittal was reversed and a six-month custodial sentence imposed.
Administrative
Likelihood of Confusion
2024
Likelihood of Confusion Determination
IP and Commercial Court·113-Xing-Shang-Geng1-1·First instance (on remand)
The double-tick device and the Alexa dialogue-box device were closely alike in appearance, the designated goods were highly similar, Alexa was more familiar to consumers, and the applicant's technology background made good faith hard to accept. Confusion was likely and cancellation was upheld.
Civil
Fair Use & Other Defences
2024
Genuine Goods Resale Marking · Trademark Use
IP and Commercial Court·113-Min-Shang-Su-8·First instance
Stating the brand name when reselling genuine goods online, in type consistent with the surrounding text and without special emphasis, is descriptive explanation rather than trademark use and does not infringe.
Criminal
Criminal Liability & Intent
2024
Online Sale of Infringing Goods Determination
IP and Commercial Court·113-Xing-Zhi-Shang-Yi-18·Second instance (summary offence)
Counterfeits seized on return were held in a low-degree act of possession continuous with the earlier sales and absorbed by the high-degree act of selling. No separate offence arises, but nor can an acquittal be entered, so the acquittal was reversed and a conviction substituted.
Criminal
Criminal Liability & Intent
2024
Trademark Crime · No Punishment of Legal Persons
Supreme Court·113-Tai-Fei-62·Extraordinary appeal
Article 95(3) contains no special provision punishing legal persons. The lower court's imposition of a fine on the company under that article, without any such request, was contrary to law, and the judgment was quashed and remanded.
Administrative
Likelihood of Confusion
2024
Likelihood of Confusion Determination
IP and Commercial Court·113-Xing-Shang-Su-10·First instance
ZORA and ZARA are highly similar, and similarity of goods follows the designated classes rather than what the other party actually manufactures. Having already faced an opposition and filed again, the applicant could not claim good faith, so registration was refused.
Civil
Parallel Imports & Exhaustion
2024
Parallel Import · Scope of Consent
Supreme Court·113-Tai-Shang-882·Third instance
The Supreme Court read "with consent" broadly: where multinational group companies stand in a subordinate relationship or share a global marketing strategy, they are treated as the same source of right. The right is internationally exhausted, so buying genuine Japanese goods for resale is lawful parallel importation.
Civil
What Counts as Trademark Use
2024
Mark as Company Name · Infringement
IP and Commercial Court·113-Min-Shang-Su-7·First instance
Registering a company name is not trademark use, but where a party knowingly changes its name to another's registered mark and actual consumer confusion follows, Article 70(2) may be applied by analogy and infringement is deemed. A name change made with knowledge is not good-faith prior use.
Civil
Damages, Liability & Remedies
2024
Revocation Effect · Infringement Damages
Supreme Court·113-Tai-Shang-275·Third instance
Revocation takes effect only prospectively and is not retroactive. Damages claims for infringement during the period the registration was valid are unaffected, but after revocation the proprietor can no longer restrain others from using the mark.
Civil
What Counts as Trademark Use
2023
Domain & Social Account Use · Survey Evidence
IP and Commercial Court·112-Min-Shang-Shang-8·Second instance
Domain names and social account names distinguish the business entity and are not trademark use, whereas prominent marking on the goods themselves and in the online storefront does infringe. A consumer survey is only persuasive if jointly commissioned, representative, and conducted with isolated observation at different times and places.
Administrative
Genuine Use & Non-Use Revocation
2023
Cross-Border Website Trademark Use Evidence
Supreme Administrative Court·112-Shang-373·Third instance
Traditional-Chinese interfaces, Taiwanese delivery addresses and duty breakdowns on a cross-border shopping site must be cross-checked and weighed as a whole. Digital records cannot be rejected as proof of use merely because they were not notarised, and the case was remanded.
Civil
Likelihood of Confusion
2023
Cross-Border Online Purchase · Likelihood of Confusion
IP and Commercial Court·112-Min-Shang-Su-46·First instance
Consumers ordering from a Korean seller through Shopee already knew the goods came from abroad, so origin confusion did not arise. The plaintiff's mark had also been revoked for three years' non-use, so even a highly similar sign did not infringe.
Civil
What Counts as Trademark Use
2023
Mark as Company Name · Infringement Intent
IP and Commercial Court·112-Min-Shang-Su-59·First instance
Registering another party's trademark wording as a company name identifies the business entity and is not trademark use. The plaintiff could not prove the mark was well known, and the defendant's continued use of its parent company's name showed no unfair competitive intent.
Civil
What Counts as Trademark Use
2023
Post-OEM Packaging Use · Infringement
IP and Commercial Court·112-Min-Shang-Su-19·First instance
A mark printed on the bottle base in a significant proportion and left unobscured is still trademark use and infringes, so removal and destruction were ordered. But because the defendant had the plaintiff's email consent to run down stock, there was no intent or negligence and no damages were payable.
Criminal
Criminal Liability & Intent
2023
Figurative Mark Similarity Determination
IP and Commercial Court·112-Xing-Zhi-Shang-Yi-10·Second instance (summary offence)
Applying overall observation, a spanner device used on hand tools is explanatory and weakly distinctive. The two marks differed clearly in overall appearance and pronunciation, and as the defendant had filed on professional advice there was no intent, so the acquittal stood.
Administrative
Registrability & Distinctiveness
2023
3D Mark Distinctiveness Determination
Supreme Administrative Court·112-Shang-55·Third instance
Each element of the shoe was ergonomic and functional, describing product characteristics and lacking inherent distinctiveness. The survey sample was geographically limited with an insufficient recognition rate, so acquired distinctiveness also failed and refusal became final.
Administrative
Genuine Use & Non-Use Revocation
2023
Trademark Use · Similarity of Services
IP and Commercial Court·112-Xing-Shang-Su-41·First instance
Use of a distinctive surgical name in patient records was sufficient evidence of actual use. Medical services overlap with and are comparable in nature to hospitals, clinics, physiotherapy and nursing, so the revocation decision was set aside.
Administrative
Likelihood of Confusion
2023
Likelihood of Confusion Determination
IP and Commercial Court·112-Xing-Shang-Su-55·First instance
Weighing all five factors, the two marks differed in appearance, pronunciation and concept, so similarity was very low. The mark at issue was better known to consumers through extensive marketing and had not been filed in bad faith, so the opposition failed.
Civil
What Counts as Trademark Use
2023
Signboard Use · Trademark Use Determination
IP and Commercial Court·112-Min-Shang-Shang-14·Second instance
Although the signboard carried the clinic's full name, deliberately enlarging three characters so that they became what consumers relied on to identify origin constituted trademark use and infringement. Internal reasons such as a homophone naming rationale or covering an old sign were no defence.
Civil
Damages, Liability & Remedies
2023
Exclusive License Standing · Damages Calculation
IP and Commercial Court·112-Min-Shang-Shang-2·Second instance
An infringer is not the bona fide third party protected by the recordal system, so an unrecorded exclusive licensee still has standing to sue. Importing counterfeits seized by customs and never released to the market still infringes, but damages were reduced to NT$500 per item on compensatory principles.
Criminal
Criminal Liability & Intent
2023
Criminal Court Not Bound by Civil Judgment
Supreme Court·112-Tai-Shang-2068·Third instance
A criminal court must investigate the evidence itself and is not bound by a civil judgment. The defendant had done OEM work for the proprietor and knew the mark yet marketed under it, which was trademark use with direct intent, so the conviction became final.
Criminal
Criminal Liability & Intent
2023
Knowledge of Infringing Goods Determination
IP and Commercial Court·112-Xing-Zhi-Shang-Yi-61·Second instance (summary offence)
The acquittal was reversed: given years of trading experience, abnormal supply channels and prices absurdly out of line with the market, the defendant could not claim ignorance even though the goods were unopened. Actual knowledge amounting to direct intent was established.
Criminal
Criminal Liability & Intent
2023
Forwarding Goods · Sale of Infringing Goods Crime
IP and Commercial Court·112-Xing-Zhi-Shang-Yi-25·Second instance (summary offence)
Merely receiving and forwarding goods on the instructions of an overseas seller, without any sale of one's own or corresponding intent, does not constitute the offence of selling infringing goods. A single witness whose evidence was internally inconsistent and uncorroborated could not support a conviction.
Administrative
Procedure, Evidence & Jurisdiction
2023
Standing in Administrative Appeal
IP and Commercial Court·112-Xing-Shang-Su-57·First instance
A third party who is not the addressee of a decision granting registration has only a reflex interest and no legal interest, so it cannot bring an administrative appeal. Having filed observations does not confer party status; the remedy is opposition or invalidation.
Administrative
Genuine Use & Non-Use Revocation
2023
Foreign-Located Services · Genuine Use in Taiwan
IP and Commercial Court·112-Xing-Shang-Su-14·First instance
Even where all service locations are overseas, marketing through Taiwanese travel agencies and booking sites, with consumers completing reservations and payment in Taiwan, has the economic significance of opening a domestic market and constitutes genuine use.
Civil
Fair Use & Other Defences
2023
Scope of Good-Faith Prior Use
IP and Commercial Court·112-Min-Shang-Su-34·First instance
Good-faith prior use is confined to the original goods and the original scale of production and distribution. Physical packaged sales and new flavour development remained protected, but online e-commerce marketing started only after registration was an expansion of use and infringed.
Criminal
Criminal Liability & Intent
2023
Acquittal · Insufficient Investigation
IP and Commercial Court·112-Xing-Zhi-Shang-Yi-37·Second instance (summary offence)
A defendant's failure to attend is an exercise of the right to be heard and cannot support an adverse inference. Unbranded packaging and a low purchase price alone did not prove subjective knowledge, so the acquittal was upheld under the presumption of innocence.
Criminal
Criminal Liability & Intent
2023
Trademark Crime · Scope of Prosecution & Proof
IP and Commercial Court·112-Xing-Zhi-Shang-Yi-21·Second instance (summary offence)
Copyright in commissioned packaging design vests in the designer, but the commissioning party may exploit it for the commissioned purpose and so lacked infringing intent, warranting acquittal. The prosecution's attempt to add an uncharged Trademark Act offence on appeal breached the no-trial-without-charge principle.
Administrative
Registrability & Distinctiveness
2023
Trademark Distinctiveness Assessment
IP and Commercial Court·112-Xing-Shang-Geng1-1·First instance (on remand)
Distinctiveness must be assessed mark-by-mark against each designated item. TIPO's blanket refusal without specific reasoning deprived the applicant of the chance to restrict or divide the specification, which was procedurally unlawful; the decision was set aside and re-examination ordered.
Civil
Parallel Imports & Exhaustion
2023
Cross-Border Trademark Exhaustion
IP and Commercial Court·112-Min-Shang-Shang-Geng1-2·Second instance (on remand)
Looking through the corporate form, the Taiwanese and Japanese proprietors were economically and legally connected and their exclusive rights shared one origin. International exhaustion therefore applied to parallel imports of genuine Japanese goods, and the Taiwanese proprietor could not sue the seller.
Civil
Procedure, Evidence & Jurisdiction
2023
Standing in Declaratory Action
IP and Commercial Court·112-Min-Shang-Su-40·First instance
Although the complaint was withdrawn, an earlier warning letter had left the plaintiff's legal position uncertain, so a declaratory interest remained. A magnetic ring device merely indicated MagSafe alignment functionality, which was not trademark use and was protected fair use.
Criminal
Criminal Liability & Intent
2023
Trademark Infringement Sentencing & Probation
IP and Commercial Court·112-Xing-Zhi-Shang-Yi-46·Second instance (summary offence)
Holding a registration in a different class is no shield against infringing another party's goods mark. Sentencing was a lawful exercise of the trial court's discretion and a later settlement does not reopen it, but the defendant's appellate settlement and admission earned two years' probation.
Administrative
Genuine Use & Non-Use Revocation
2023
Trademark Use Identity · Cross-Border Marketing
IP and Commercial Court·112-Xing-Shang-Su-18·First instance
Omitting a subsidiary device that is not spoken or read does not alter the main identifying features and does not destroy identity with the registered mark. A foreign-language site that merely lists Taiwan as a shipping option, with no localised interface or actual transactions, is not marketing to Taiwan.
Administrative
Registrability & Distinctiveness
2023
Mark Similarity · Red Cross Emblem Confusion
IP and Commercial Court·112-Xing-Shang-Su-12·First instance
Applying overall observation, a cross device in the medical field is a descriptive and generic shape. The mark at issue was dominated by a cartoon animal and wording, so similarity to the Red Cross emblem was very low and no confusion was likely.
Administrative
Likelihood of Confusion
2023
Disclaimed Elements · Mark Similarity Assessment
IP and Commercial Court·112-Xing-Shang-Su-22·First instance
Disclaimed elements must still be included in the overall comparison when assessing likelihood of confusion and cannot be excluded. The earlier mark had acquired distinctiveness, the marks differed by a single character, and the goods were highly similar, so the opposition succeeded.
Civil
Procedure, Evidence & Jurisdiction
2023
Retrial Ruling · Limit on Further Appeal
Supreme Court·112-Tai-Kang-740·Interlocutory appeal
Where no appeal lies to the third instance, a ruling dismissing a retrial application is absolutely not subject to further appeal — even if the sealed copy of the ruling wrongly stated that an appeal was available. The appeal was unlawful and dismissed.
Criminal
Criminal Liability & Intent
2023
Counterfeit Goods Accomplice Determination
IP and Commercial Court·112-Xing-Zhi-Shang-Yi-9·Second instance (summary offence)
Names and phone numbers on an import declaration alone could not support a conviction: the signature was found forged, the phone number had no link to the defendant, the phone had no EZWay app installed, and the consolidator had misused the defendant's personal data. Doubt was resolved in the defendant's favour.
Administrative
Genuine Use & Non-Use Revocation
2023
Revocation Procedure · Timing of Use Evidence
Supreme Administrative Court·112-Shang-20·Third instance
Failure to respond within the time limit in revocation proceedings does not work a substantive forfeiture. The proprietor may still submit evidence of genuine use at the administrative litigation stage, so the revocation decision was unlawful and was set aside.
Criminal
Criminal Liability & Intent
2023
Multiple-Account Sales · Number of Offenses
IP and Commercial Court·112-Xing-Zhi-Shang-Yi-17·Second instance (summary offence)
Where the same seller used different accounts to sell counterfeits with overlapping periods, identical locations and methods, and overlapping marks, the conduct was a continuing offence in notional concurrence forming one case, already covered by the earlier judgment, so the dismissal of the prosecution stood.
Civil
Damages, Liability & Remedies
2023
Take-Down Action · Infringement Intent
IP and Commercial Court·112-Min-Shang-Shang-5·Second instance
A brand owner that had already instructed distributors to delist before receiving the warning letter discharged its duty of care as a good administrator. A distributor's own sales based on a misunderstood grace period were not attributable to the brand owner, and evidence gathered by entrapment within that period risked being an abuse of right.
Civil
Online Platforms & Cross-Border
2023
Territoriality · Overseas Manufacture Infringement
IP and Commercial Court·112-Min-Shang-Su-4·First instance
Under the territoriality principle, evidence of sales in Hong Kong could not show that the infringing act occurred within Taiwan. A party asserting a well-known mark must prove that Taiwanese consumers generally recognised it before the defendant's incorporation, and the plaintiff's evidence fell short.
Civil
Procedure, Evidence & Jurisdiction
2023
Defective Reasoning of Judgment
Supreme Court·112-Tai-Shang-836·Third instance
The lower court compared only the composite word-and-device mark and failed to consider the plain word mark the plaintiff had also relied on before finding no likelihood of confusion. That was an unlawful failure to give adequate reasons, and the judgment was quashed and remanded.
Criminal
Criminal Liability & Intent
2022
Infringement Crime vs Sale-of-Goods Crime
IP and Commercial Court·111-Xing-Zhi-Shang-Yi-22·Second instance (summary offence)
The defendant decided on and instructed an unwitting OEM factory to print the mark, making him an indirect principal treated as having used the mark himself. That establishes the Article 95 infringement offence rather than mere sale, and the later display and sale were absorbed.
Administrative
Registrability & Distinctiveness
2022
Distinctiveness Assessment Time · Use Evidence
Supreme Administrative Court·111-Shang-463·Third instance
In opposition proceedings acquired distinctiveness is assessed at the date the registration was approved, and post-registration evidence is disregarded. The wording was descriptive, and use in combination with a device could not show that the words alone were distinctive.
Civil
Well-Known Marks & Dilution
2022
Dilution of Well-Known Mark · Good-Faith Prior Use
IP and Commercial Court·111-Min-Shang-Su-40·First instance
The mark was found well known, and the defendant's cross-class use both diluted distinctiveness and created confusion. Because the defendant's use postdated the plaintiff's and he knew of the fame, good-faith prior use failed; damages were awarded on a retail-price multiplier and a name change was ordered.
Criminal
Fair Use & Other Defences
2022
Trademark Parody Determination
IP and Commercial Court·111-Zhi-Yi-14·First instance (summary offence)
Appropriating the highly distinctive Dior and GUCCI marks directly onto the same class of clothing generated no independent new meaning, so the parody defence failed. Confusion had already arisen, and a custodial sentence was imposed with forfeiture of the infringing goods.
Criminal
Criminal Liability & Intent
2022
Import of Infringing Goods · Knowledge & Intent
IP and Commercial Court·111-Xing-Zhi-Shang-Yi-63·Second instance (summary offence)
Filing an import declaration does not equate to knowledge of infringement; the prosecution must affirmatively prove subjective intent. The defendant's prior convictions were character evidence and, absent striking similarity, could not be used to infer propensity, so the acquittal stood.
Civil
Registrability & Distinctiveness
2022
Distinctiveness & Good-Faith Prior Use
IP and Commercial Court·111-Min-Shang-Shang-17·Second instance
To claim acquired distinctiveness, the evidence of use must predate registration and match the registered representation. General retail and specialist retail are not necessarily similar and trademark infringement failed, but copying the layout of another's website breached the Fair Trade Act.
Administrative
Likelihood of Confusion
2022
Similarity of Goods vs Likelihood of Confusion
Supreme Administrative Court·111-Shang-908·Third instance
NAVY and OLD NAVY share the same dominant portion and are therefore similar. Similarity of goods is not the same as consumer familiarity, evidence of use must correspond to the registered class, and the better-known earlier registration deserves broader protection.
Civil
Ownership, Assignment & Licensing
2022
Pre-Registration Use · Scope of Trademark Right
IP and Commercial Court·111-Min-Shang-Su-51·First instance
Taiwan follows the registration principle, so use before publication of registration falls outside the scope of the trademark right. A trader who advertises without verifying is negligent, and continued use after police notification becomes intentional; damages of NT$660,000 were awarded.
Civil
What Counts as Trademark Use
2022
Decorative Pattern · Trademark Use Determination
IP and Commercial Court·111-Min-Shang-Su-49·First instance
Consumers identified origin from the trader's own brand on the packaging, so an internal printed pattern was decoration rather than trademark use. The pattern also lacked creative height and was not an artistic work, so both the trademark and copyright claims were dismissed.
Criminal
Fair Use & Other Defences
2022
Mark Similarity & Fair Use Determination
IP and Commercial Court·111-Xing-Zhi-Shang-Yi-14·Second instance (summary offence)
"SOFA" is a commonplace descriptive term and its use was fair. Internal sales figures did not prove the mark was well known, and as the defendant used the sign after TIPO granted his own registration, direct intent was absent and the acquittal stood.
Administrative
Genuine Use & Non-Use Revocation
2022
Trademark Maintaining Use Determination
IP and Commercial Court·111-Xing-Shang-Geng1-2·First instance (on remand)
Cross-checking delivery notes, logistics records, product photographs and witness testimony as a whole, the court found the proprietor had genuinely used the mark within the three years before the revocation application, and set the revocation decision aside.
Civil
Ownership, Assignment & Licensing
2022
Mark Assignment Validity · Authority to Represent
Supreme Court·111-Tai-Shang-1040·Third instance
Neither the absence of an internal board resolution nor an unregistered change of representative can be asserted against a bona fide third party. A trademark assignment signed while the chairman was in office was valid, and the assignee's acquisition was not unjust enrichment.
Civil
Procedure, Evidence & Jurisdiction
2022
Laches · Good-Faith Principle Determination
IP and Commercial Court·111-Min-Shang-Shang-Geng1-5·Second instance (on remand)
Twenty years of inaction alone does not amount to laches; there must be special circumstances creating a legitimate expectation that the right will not be exercised. Protection of the well-known mark extended to removal services, and the court ordered a name change, an injunction and joint damages of NT$6 million.
Criminal
Online Platforms & Cross-Border
2022
Cross-Border Website Sales · Marketing in Taiwan
IP and Commercial Court·111-Xing-Zhi-Shang-Yi-33·Second instance (summary offence)
Under the territoriality principle, selling on mainland Chinese sites such as Taobao is not automatically marketing in Taiwan. The meat products at issue were legally barred from import into Taiwan, so objectively there could be no marketing purpose directed at the Taiwanese market.
Administrative
Ownership, Assignment & Licensing
2022
Prior-Use Mark · Effect of Authorization
IP and Commercial Court·111-Xing-Shang-Su-57·First instance
A trademark licence need not be for consideration — gratuitous consent and transmission of an ethos suffice. Use by a successor and branch premises counts as continued use by the prior user, and a rigorous master's thesis had evidential weight sufficient to defeat a bad-faith filing.
Criminal
Criminal Liability & Intent
2022
Forfeiture of Proceeds · Excessive-Harshness Adjustment
IP and Commercial Court·111-Xing-Zhi-Shang-Yi-44·Second instance (summary offence)
Where the settlement sum already paid far exceeded the proceeds of the offence, ordering forfeiture as well would be excessively harsh. Forfeiture was set aside under the excessive-harshness adjustment in Article 38-2(2) of the Criminal Code, and probation was granted because the loss had been made good.
Criminal
Criminal Liability & Intent
2022
Display of Counterfeits · Aiding Liability
IP and Commercial Court·111-Xing-Zhi-Shang-Su-13·Second instance
Providing a phone number to receive SMS verification codes was a lawful business and the provider was not wholly without checks on its customers. The end customer's use of the account to sell counterfeits was incidental, so aiding intent was not established and the acquittal stood.
Administrative
Procedure, Evidence & Jurisdiction
2022
Administrative Litigation · Amendment of Claims
Supreme Administrative Court·111-Kang-364·Interlocutory appeal
A decision granting registration and a decision dismissing an invalidation are separate administrative acts. A claim added to seek cancellation of the registration must itself go through the administrative appeal stage first, and an addition made without it is not allowed.
Administrative
Bad Faith & Prior Rights
2022
Bad-Faith Imitation Intent Determination
IP and Commercial Court·111-Xing-Shang-Su-13·First instance
Foreign evidence did not show that the cited mark had been extensively marketed in Taiwan, and competitors do not automatically know of another's mark. A white cross on a red ground lacked originality, so an intent to copy could not simply be inferred, and the TIPO cancellation was set aside.
Civil
Ownership, Assignment & Licensing
2022
Mark Assignment · Unauthorized Disposition Validity
IP and Commercial Court·111-Min-Shang-Shang-1·Second instance
Trademark assignment is not a formal act — the agreement to assign takes effect on consensus, and recordal is only a requirement for asserting the assignment against third parties. A party alleging that the assignment was void for want of all partners' consent bears the burden of proving that exceptional fact.
Criminal
Criminal Liability & Intent
2022
Knowledge of Infringing Goods Determination
IP and Commercial Court·111-Xing-Zhi-Shang-Yi-55·Second instance (summary offence)
Article 97 punishes only direct intent. The defendant kept chat records confirming the goods were "original orders", even the appraiser struggled to tell the goods apart, and the low price matched the market for defective stock, so actual knowledge could not be inferred.
Criminal
Online Platforms & Cross-Border
2022
Online Marketplace Marking · Trademark Use
IP and Commercial Court·111-Xing-Zhi-Shang-Yi-21·Second instance (summary offence)
Using another's mark without authority in an online listing title and brand field to sell clothing was liable to make consumers believe there was a source or licensing connection. This was not fair use for search convenience, and the first-instance acquittal was reversed to a conviction.
Administrative
Genuine Use & Non-Use Revocation
2022
Cross-Border Website Use · Burden of Proof
IP and Commercial Court·111-Xing-Shang-Su-2·First instance
The mere fact that a global official website can be viewed from Taiwan is not genuine use in Taiwan. The proprietor must show a real possibility that orders were placed, together with domestic payment and logistics activity, failing which the registration is revoked.
Criminal
Criminal Liability & Intent
2022
Subjective Intent Defense Determination
IP and Commercial Court·111-Xing-Zhi-Shang-Yi-39·Second instance (summary offence)
Criminal liability requires intent to infringe that particular registered mark. The defendant's sales and redesign predated the complainant's registration and the design originated from a British brand, so subjective intent was absent and the defendant was acquitted.
Criminal
Procedure, Evidence & Jurisdiction
2022
Authenticity Appraisal Report Probative Value
Supreme Court·111-Tai-Shang-5677·Third instance
An appraiser selected with both parties' consent, sworn and subject to supervision may withhold some criteria as trade secrets, provided the counterfeit features are specifically itemised and the appraiser attends for cross-examination. The report was then admissible as a basis for conviction.
Administrative
Well-Known Marks & Dilution
2022
Well-Known Mark Degree of Fame Determination
Supreme Administrative Court, Grand Chamber·111-Da-1·Unifying ruling
The Grand Chamber unified the case law: a well-known mark under the second limb of Article 30(1)(11) need only be generally known to relevant businesses or consumers, not to the general public. The degree of fame is instead weighed in the overall assessment of likelihood of dilution.
Administrative
Genuine Use & Non-Use Revocation
2022
Repair-Service Use Evidence · Same-Nature Goods
IP and Commercial Court·111-Xing-Shang-Su-27·First instance
Repairing discontinued products is not use for marketing purposes, and archived web pages are insufficient proof of genuine use. Circulation fans and air conditioners differ in nature, so use on one cannot substitute for the other, and the mark was revoked for three years' non-use.
Civil
What Counts as Trademark Use
2022
Trademark Use Determination
IP and Commercial Court·111-Min-Shang-Shang-11·Second instance
Wording unrelated to the product specification and carrying no practical meaning is objectively capable of being taken by consumers as a trademark. Neither placing it alongside the trader's own brand nor listing it as a model number on the import declaration avoids liability, and trademark use was established.
Civil
Online Platforms & Cross-Border
2022
Use of Trademark in Taiwan Determination
IP and Commercial Court·111-Min-Shang-Su-32·First instance
Where both the place of the infringing act and the place of damage are in Taiwan, the Taiwanese courts have jurisdiction. A former licensee who pre-emptively registered a similar mark in mainland China and then marketed across the strait was not in good faith; an injunction and a published apology were ordered.
Civil
Damages, Liability & Remedies
2022
Calculation of Infringer's Profits
IP and Commercial Court·111-Min-Shang-Su-28·First instance
The court calculated gains by applying the industry gross-margin rate to the infringer's turnover, refusing any deduction for indirect costs. Weighing the parties' very different scale and market segments, it exercised its discretion to reduce damages to 15 per cent to keep the award proportionate.
Criminal
Fair Use & Other Defences
2022
Chinese Transliteration · Fair Use Determination
IP and Commercial Court·111-Xing-Zhi-Shang-Yi-42·Second instance (summary offence)
Adding a Chinese transliteration on a small label on the back of a parallel-imported genuine product, as required by product-labelling law and without prominence, merely explains the manufacturer. It is descriptive fair use rather than trademark use, and the acquittal became final.
Criminal
Fair Use & Other Defences
2022
Nominative Fair Use Determination
IP and Commercial Court·111-Xing-Zhi-Shang-Yi-48·Second instance (summary offence)
An aftermarket tail lamp cast with a similar mark next to the origin marking, with no "compatible with" wording, and listed online trading on the original manufacturer's name, was free-riding. Nominative fair use failed and the seller's acquittal was reversed.
Criminal
Fair Use & Other Defences
2022
Descriptive Fair Use Determination
IP and Commercial Court·111-Xing-Zhi-Shang-Yi-40·Second instance (summary offence)
The name at issue was unrelated to mattress function and highly distinctive, and the defendant deliberately enlarged it and placed it in the web page title to attract search traffic. That was trademark use, not a model description, and as a former OEM supplier he had direct intent, so he was convicted.
Administrative
Likelihood of Confusion
2022
Degree of Mark Similarity Determination
IP and Commercial Court·111-Xing-Shang-Su-39·First instance
Applying overall observation, the design and overall impression of the mark at issue differed clearly from the cited mark and similarity was low. The application was in good faith and the marks had coexisted for four years without actual confusion, so no likelihood of confusion arose.
Civil
Fair Use & Other Defences
2022
Geographic Name Fair Use Determination
IP and Commercial Court·111-Min-Shang-Shang-14·Second instance
Using another's mark as the visual centrepiece of property marketing while concealing the developer's real name is trademark use and infringes. The development was 1.1 km from the district in question, so there was no need to describe location and the fair-use defence did not apply.
Civil
Likelihood of Confusion
2022
Goods Classification Determination
IP and Commercial Court·111-Min-Shang-Su-30·First instance
Class allocation is determined substantively by actual ingredients, marketing language and consumer perception. A plant-protein drink promoted as a nutritional supplement falls in Class 5, and the proprietor and its distributor were joint infringers; a sales halt and destruction were ordered.
Civil
Procedure, Evidence & Jurisdiction
2022
Mandate Contract Dispute · Jurisdiction
IP and Commercial Court·111-Min-Shang-Shang-8·Second instance
A dispute over a mandate to file trademark applications has as its subject matter general tort and mandate contract claims, not rights protected by the Trademark Act. The IP and Commercial Court had no jurisdiction and transferred the case to the High Court of its own motion.
Civil
Online Platforms & Cross-Border
2021
Platform Authenticity Duty · Damages Calculation
IP and Commercial Court·110-Min-Shang-Shang-13·Second instance
An online shopping platform that is in substance the seller does not discharge a good administrator's duty of verification by relying on an affidavit without checking original import declarations and manufacturer authorisation. Damages were assessed on the gains derived, deducting only direct necessary costs.
Civil
Damages, Liability & Remedies
2021
Cross-Strait Trademark Infringement · Joint Liability & Damages
IP and Commercial Court·110-Min-Shang-Shang-14·Second instance
A party that merely performs OEM work without marketing purpose or knowledge is not a joint infringer, but one who buys and resells knowing there is no authorisation is jointly and severally liable. Damages were reduced to NT$1 million based on the quantity actually released to the market.
Administrative
Procedure, Evidence & Jurisdiction
2021
Necessity of Evidence Investigation
Supreme Administrative Court·110-Shang-442·Third instance
Evidence relevant to the facts in issue cannot be prejudged as unnecessary and refused. Evidence must be cross-checked and assessed as a whole rather than evaluated piecemeal, and the judgment was quashed and remanded.
Civil
Damages, Liability & Remedies
2020
Trademark Infringement Damages Calculation
IP and Commercial Court·109-Min-Shang-Shang-Geng1-2·Second instance (on remand)
An infringer wishing to deduct costs bears the burden of proving direct costs, and fixed operating expenses cannot be deducted. Revenue from the online service was entirely attributable to the mark, and where the claim is already below a reasonable royalty rate the court will not reduce it.