Why would the same string of letters, from the same defendant, meet two different fates? This piece is built around the Intellectual Property and Commercial Court's judgment in 112 Min-Shang-Shang No. 8 (“iROO” v. “AROO,” the primary case), set against the same court's 113 Min-Shang-Shang No. 11 (“Taiwan Mastercard” v. “MASTERCARD,” the contrasting case). Both address how to treat “taking the words in someone else's trademark and using them as the name that identifies a business entity,” yet they reach opposite results. The first key distinction is whether the trademark is well-known.
Part I: The Statutory Text
The text below is the version in force at the time of these judgments and as of 29 July 2026. Article 70 is set out in full to avoid the impression that anything is missing, though this piece discusses only subparagraph 2.
Trademark Act, Article 5 (Use of a trademark)
“Use of a trademark” means any of the following acts, for marketing purposes, that is sufficient to enable relevant consumers to recognize it as a trademark:
1. applying a trademark to goods or their packaging or containers;
2. holding, displaying, selling, exporting, or importing the goods referred to in the preceding subparagraph;
3. applying a trademark to articles relating to the provision of services; or
4. applying a trademark to commercial documents or advertisements relating to goods or services.
The preceding paragraph also applies where the act is carried out by means of digital audio-visual media, electronic media, the internet, or other media.
Trademark Act, Article 68 (Infringement of trademark rights)
Any of the following acts, done for marketing purposes without the consent of the trademark owner, constitutes infringement of the trademark right: (1) using a mark identical to a registered trademark on the same goods or services; (2) using a mark identical to a registered trademark on similar goods or services, where there is a likelihood of confusion among relevant consumers; (3) using a mark similar to a registered trademark on the same or similar goods or services, where there is a likelihood of confusion among relevant consumers.
Trademark Act, Article 70 (Acts deemed infringement)
Any of the following acts, without consent of the proprietor of a registered trademark, shall be deemed infringement of the right of such trademark: (1) knowingly using a trademark which is identical with or similar to another person's well-known registered trademark, and hence there exists a likelihood of dilution of the distinctiveness or reputation of the said well-known trademark; (2) knowingly using words contained in another person's well-known registered trademark as the name of a company, business, group or domain or any other name that identifies a business entity, and hence there exists a likelihood of confusion on relevant consumers or a likelihood of dilution of the distinctiveness or reputation of the said well-known trademark; or (3) knowingly, where there is a likelihood of infringement under Article 68, manufacturing, holding, displaying, selling, exporting or importing labels, tags, packaging, containers, or service-related articles not yet combined with the goods or services.
Trademark Act, Article 69, Paragraph 1 (Removal and prevention of infringement)
A trademark owner may demand the removal of any infringement of the trademark right; where there is a threat of infringement, the owner may demand its prevention.
The division of labour among these provisions is the backbone of this article. Article 5 defines what “trademark use” is; Article 68 lists unconsented trademark use as infringement; Article 69 grants the rights to demand removal and prevention. Article 70(2) is a separate, independent route: it does not deal with “affixing words to goods as a trademark,” but with “taking words from another's well-known trademark and using them as the name of one's own company, business, domain, or other name identifying a business entity.” Note the high-threshold precondition: the other party's registered trademark must be well-known, and the actor must have acted knowingly; even past that threshold, the words must be used as the name identifying a business entity, and there must be a likelihood of confusion among relevant consumers or a likelihood of diluting the distinctiveness or reputation of the mark.
Part II: Case Commentary
1. The Primary Case: 112 Min-Shang-Shang No. 8, “iROO” v. “AROO”
The marks at issue are three registered “iROO” marks of an apparel brand (Registration Nos. 00889945, 00121826, 01501234), designated for Class 25 apparel goods such as underwear, shirts and coats; Class 35 retail of piece goods, clothing and clothing accessories; and Classes 32, 33 and 35, among others. They were set against the accused “AROO” functional fitness apparel.
The appellee (plaintiff, trademark owner) founded the “iROO” apparel brand in 1999 and argued that, through years of marketing, the marks had become widely recognized among consumers and had thereby become well-known. It alleged that the appellant, knowingly operating in the same apparel trade, used the similar wording “AROO” on apparel goods and online retail services, registered the domain name “aroo.com.tw,” built an “AROO” functional-fitness-apparel website selling clothing printed with “AROO,” and used “AROO” as its e-commerce and social-media account names on Shopee, Facebook, Instagram and YouTube, constituting intentional infringement under Article 68(3) and Article 70(2).
The appellant argued that what it used was a specially designed “AROO,” differing from the marks in initial letter, pronunciation and typeface and therefore not similar; that the consumer groups and sales channels did not overlap at all, so there was no possibility of confusion. It also commissioned a market survey of its own, arguing that the results showed nearly 90% of consumers could clearly tell the two apart. The first instance found infringement; the defendant appealed.
The case had two core issues: does using the similar wording in a domain name, a shopping-platform account and social-platform accounts constitute “trademark use” under Article 5? And how are the probative value and admissibility of a market survey to be assessed? The court took the defendant's conduct apart and tested each piece separately — the starting point of the test was “where it is placed and what it is used to indicate,” returning to the core of Article 5: whether the use is “sufficient to enable relevant consumers to recognize it as a trademark,” that is, whether it can objectively serve as the basis for identifying the source of goods or services.
The parts that were trademark use: prominent places on the web pages, prefixes to product names, and the front of the garments. Reviewing the website, the Shopee storefront and the social-media pages the defendant ran, the court found that in the prominent areas of these pages the defendant used “AROO” in a larger font or a bold designed script; that it added an “AROO” prefix before the names of the displayed products; and that, as the product images showed, the front of the apparel goods on sale all bore the “AROO” designed script. These uses were “objectively sufficient to serve as the basis on which consumers identify the source of the goods or services,” and the court accordingly held them to be “trademark use beyond doubt.”
The parts that were not trademark use: the domain name, the storefront account and the social account names. This is the case's most indicative holding. The court noted that the “aroo.com.tw” domain name, the Shopee storefront's user avatar and description text, and the social-platform page accounts were, “apart from using the appellant's mark as an account avatar to indicate the business entity, merely used to describe the name of the user of that storefront account, for the purpose of distinguishing it from other business entities or accounts.” Therefore, “according to ordinary social conventions and market-transaction circumstances, relevant consumers would not directly take the domain name, the storefront user, or the social-platform account name as a sign distinguishing one person's goods or services from another's, but rather as an identifier of the business entity, and so it is not trademark use.” It must be stressed that this is a case-specific finding, not a universal rule: a shop name, a signboard or an account can equally carry a service-source-identifying function; if an account name is made especially prominent, or used repeatedly in advertising or side-by-side with the goods, it may still be trademark use.
The finding on likelihood of confusion: the court accepted the results of a jointly commissioned market survey. The case was referred by agreement of both parties to the Taiwan Institute of Economic and Technological Development for a survey conducted online and in person across the North, Central and South regions. Of 205 online respondents, only 33.66% knew “AROO”; of 605 in-person respondents, only 19.67% knew it. More decisive was the confusion rate: among online respondents who expressed an impression (excluding “don't know”), over 70% considered the two marks might come from the same or a related source; among in-person respondents, over 60%. The court found this sufficient to show a likelihood of confusion among relevant consumers.
Rejecting the appellant's challenge to the survey method. The appellant argued the survey was not conducted on a “different-time” basis and was limited to particular regions. The court replied that the “different-time/different-place, isolated-observation” principle mainly serves to remind examiners to imagine ordinary real purchasing behaviour, not to require examination to be conducted on that literal basis, “because that would be impossible to achieve and is also unnecessary.”
Declining the appellant's self-commissioned survey report. The appellant submitted its own market survey to show there was no likelihood of confusion. The court declined to accept it for three reasons: it was commissioned unilaterally without the court's procedural involvement; the parties had subsequently agreed to a jointly selected institute, so the earlier self-commissioned result should not be revived merely because the joint result was unfavourable; and the report surveyed only two cities, unable to represent the country's relevant consumers. The court did not hold that a unilaterally commissioned survey is inadmissible as a matter of law — rather, that its procedure and method were insufficient to support a favourable finding.
The well-known threshold was not met, so Article 70(2) failed. This determined the fate of the case's “other half.” The court found that the material the appellee submitted “was not yet sufficient to prove that the marks had become widely recognized by the relevant businesses or consumers so as to reach the level of being well-known.” That being so, the defendant's use of the words as a domain name, storefront user and social account names “did not constitute infringement under Article 70(2).” Note the double failure here: the domain name and account names were neither trademark use under Article 5 (so Article 68 was unavailable) nor could they proceed under Article 70(2) because the mark was not well-known. Both routes were blocked, and the plaintiff's request to cancel the domain-name registration naturally lost its footing.
On one hand, the court found the defendant's use of “AROO” on the goods and in prominent web-page positions constituted infringement under Article 68(3). On the other hand, the original judgment's orders to cancel the “aroo.com.tw” domain-name registration and to bar use of the similar wording as account names were all set aside, and the appellee's claim on that part was dismissed. In one sentence: the “AROO” on the goods and web pages was stopped; the web address and the account names were not.
2. The Contrasting Case: Same Question, Different Answer
113 Min-Shang-Shang No. 11, “Taiwan Mastercard” v. “MASTERCARD” fought over the same thing as the primary case: does taking words from another's trademark and using them as the name identifying a business entity infringe the trademark right? The appellee, Mastercard International Incorporated, owned the “萬事達,” “萬事達卡” and “MASTERCARD” marks for banking and credit-card services. The appellant, Taiwan Mastercard Payment Flow Co., Ltd., used “萬事達” as the distinctive portion of its company name to operate a third-party-payment business. The appellant argued the appellee had long known and continued to cooperate, amounting to implied consent. The result was the opposite of the primary case: the court found infringement, and the appeal was dismissed.
First divergence: this time the trademark is “well-known,” so the Article 70(2) door opened. The court found that the appellee had continuously marketed and used the marks for more than 20 years since 1991, with a domestic market share already over 42% by November 2002, such that the marks could be found already well-known by the time the appellant company was established in 2003. The appellant later adopted “萬事達” as the distinctive portion of its company name, and the third-party-payment business it operated was highly similar to the widely known banking and credit-card business, such that relevant consumers “are all the more likely to mistake the two as names identifying the same business entity,” giving rise to a likelihood of confusion under Article 70(2). The first watershed for whether Article 70(2) protection can be triggered is whether the trademark is proven to be well-known. But this subparagraph is not made out automatically on “well-known + knowing”: the words must still be used as the name identifying a business entity, with a likelihood of confusion or dilution.
Second divergence: the “non-trademark-use” defence loses its meaning in the face of a well-known mark. The primary case's key reasoning was that, by trade custom, domains and accounts merely identify the business entity, so they are not trademark use under Article 5. That logic does not work as a defence in the contrasting case, because the very object Article 70(2) governs is “the name identifying a business entity” — a second route the legislature opened for well-known marks that does not presuppose trademark use under Article 5. To go via Article 68 you must first clear “trademark use”; to go via Article 70(2) you need not, but you must first clear “well-known + knowing,” and still show a likelihood of confusion or dilution.
Third divergence: similarity was assessed differently, but both pointed to source confusion. The primary case established likelihood of confusion through survey data; the contrasting case used a substantive assessment — the court held that the Chinese rendering of “MASTERCARD” is the same as “萬事達,” that third-party payment is closely connected with credit-card processing and often provided by the same operator, and that consumers would directly take the wording as a sign indicating source.
Fourth divergence: “awareness” is not “consent.” The court flatly rejected the implied-consent argument: business cooperation and whether one consents to use of a trademark and company name “are two different matters,” and a cooperative relationship alone does not support inferring implied consent.
Fifth divergence: the gap in the scope of remedies shows directly in the judgment's operative part. In the primary case the rights holder had obtained, at first instance, orders to cancel the domain name and bar use of the account-name distinctive portion; the second instance set aside that whole block. In the contrasting case the appeal was dismissed entirely, and use of the company name was brought within the scope of the prohibition.
A point in common: neither case excused the user just because it “has its own brand.” The primary-case defendant argued its “AROO” was an independent, specially designed sign; the court was not deterred. The centre of gravity throughout is whether, objectively, consumers would mistake the source or mistakenly assume a relationship such as affiliation, licensing or franchising. The court found infringement under both Article 68(3) and Article 70(2), and the appeal was dismissed.
The two cases, side by side: both handle the same act with three watersheds. First, whether the trademark is well-known: the primary threshold for invoking Article 70(2). Second, which route the claim takes: Article 68 requires first establishing “trademark use” under Article 5; Article 70(2) targets the business-entity name directly and need not clear trademark use first. Third, placement determines character: the same wording is “trademark use” on the front of goods and in prominent places on web pages, but only a “business-entity identifier” in the web-address and account-name fields.
Part III: The Statute, Provision by Provision
Article 5 (Use of a trademark). Trademark use requires three elements: use in the course of marketing or commercial dealing; one of the listed forms of use; and use sufficient to enable relevant consumers to recognize the sign as a trademark. The third element is the core: a trademark's primary function is to identify the source of goods or services, so even with a marketing purpose and active use, the use must still be objectively sufficient to enable relevant consumers to recognize it as a trademark before it performs an identifying function. The primary case applies exactly this standard: the same “AROO,” enlarged and placed in prominent places on the web pages and on the front of the garments, was objectively a basis for identifying source; filled into the domain and account fields, by ordinary social convention it was taken only as an identifier of the business entity.
Article 68 (Infringement of trademark rights). This provision defines the exclusive scope within which an owner may bar others' use, its purpose being mainly to ensure the trademark's source-identifying function is not undermined, and to protect relevant consumers from a likelihood of confusion. Subparagraph 1 differs from subparagraphs 2 and 3 in that, for an identical mark on identical goods, infringement is presumed without requiring a likelihood of confusion; subparagraphs 2 and 3 require a case-by-case assessment. Both cases applied subparagraph 3, so both had to establish a likelihood of confusion substantively.
Article 70(2) (Acts deemed infringement). This provision is a legal fiction of trademark infringement, and precisely because it is a fiction, its elements are construed strictly. “Knowingly” means actual knowledge, to be proved by the party asserting it; negligent ignorance is not “knowing.” The finding of a “well-known trademark” considers the degree to which the relevant businesses or consumers know the mark, the duration, scope and geography of its use, the record of successful enforcement, and the mark's value, judged by recognition within the territory of the Republic of China. That Article 70(2) expressly lists “domain” alongside “other names identifying a business entity” shows the legislature long foresaw the problem of address-grabbing — it just reserved the protection for well-known marks.
A closing reminder for practice: if the other side affixes wording to goods, packaging or prominent places on web pages, gather evidence aimed at “prominent, enlarged, placed in a source-indicating position,” and go via Article 5 plus Article 68. If the other side fills the wording into a company name, domain or platform account, whether that route works depends on whether the name is made especially prominent on the page or placed side by side with the goods; where it is “used only to distinguish the operating entity,” one must switch to Article 70(2), whose first gate is proving the mark is well-known and the other party knew. Evidence of fame — market share, marketing duration, media coverage, survey data — should be assembled before filing.
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