Does Using Registered-Mark Wording in Advertising Amount to Infringement? How Taiwan Courts Identify Trademark Use

Two Taiwanese judgments reached opposite results on whether particular wording functioned as a trademark. In Intellectual Property and Commercial Court 114 Min-Shang-Su No. 12 (the “Jin Shun An and Device” mark), the court held that the defendants' religious-ceremony materials did not amount to trademark use and dismissed the claim. In Intellectual Property Court 108 Min-Shang-Su No. 8 (the “Lao Tian Lu” mark), the court held that “second-generation self-created brand of Shanghai Lao Tian Lu” did amount to trademark use and found infringement. Both decisions focused on source identification, although only the 108 court directly addressed Article 36. Below, the statutory text comes first, followed by how each court applied it.

Part I: The Statutory Text

Trademark Act, Article 5 (Use of a Trademark)

The use of a trademark refers to any of the following circumstances, for marketing purposes and sufficient to enable relevant consumers to recognize it as a trademark:
1. Applying the 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 the trademark to articles relating to the provision of services.
4. Applying the trademark to commercial documents or advertisements relating to goods or services.
The same applies where any of the circumstances in the preceding paragraph is carried out by means of digital audio-visual media, electronic media, the internet, or other media.

Trademark Act, Article 36, Paragraph 1, Subparagraph 1 (Descriptive-Use Limitation)

A person is not bound by the effect of another's trademark right where, by good-faith methods consistent with commercial trading practice, that person indicates their own name or title, or the name, shape, quality, nature, characteristics, use, place of origin, or other description of their goods or services, and does not use it as a trademark.

Trademark Act, Article 68 (Infringement of Trademark Right)

Any of the following, done for marketing purposes without the trademark owner's consent, 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 69, Paragraph 1 (Stopping and Preventing Infringement)

A trademark owner may demand that infringement of the trademark right be stopped; where there is a likelihood of infringement, the owner may demand its prevention.

Article 5 defines trademark use. Article 68 identifies infringing acts, Article 69 provides the remedies for stopping and preventing infringement, and Article 36(1) limits the effect of the right in specified circumstances. In these cases, the courts first considered whether the challenged conduct amounted to trademark use under Article 5. The 108 court then addressed Article 36. The 114 court resolved the dispute under Articles 5, 33, 68 and 69 without relying on Article 36.

Part II: Case Commentary

1. Primary case: 114 Min-Shang-Su No. 12, “Jin Shun An and Device”

The mark at issue is a religious-services mark, “Jin Shun An and Device” (Registration No. 02403877, designated for Class 045: “organizing religious gatherings, agency services for religious ceremonies, conducting religious rites”). The dispute concerned the name of a wang chuan, a ritual ship used in Taiwanese Wangye worship, rather than an ordinary consumer brand.

The plaintiff is the owner of the mark, with a term of the trademark right running from 16 September 2024 to 15 September 2034. The plaintiff claimed that the family had used the “Jin Shun An” name with a ship form over generations; kept a ship model bearing that name in the family shrine; held religious rites; and organized a pilgrimage to Lukang Tianhou Temple. The plaintiff alleged that the defendants built a wang chuan bearing “Jin Shun An,” formed a “Jin Shun An” ritual-ship crew association, and held the “Jin Shun An Wang-ke Grand Ceremony.” Related photographs and event materials appeared on Facebook and Instagram. The plaintiff alleged a likelihood of confusion and sought orders stopping and preventing infringement under Articles 68(3) and 69(1).

The defendants operate a temple and manage its Facebook page and Instagram account. The challenged wording appeared in the ritual ship's name, religious flags, lantern decorations, a ceremonial archway, schedules and posters. The defendants argued that “Jin Shun An” merely named the ritual ship and described the events; it was not used as a trademark.

The dispute was whether writing “Jin Shun An” in ceremonial documents and event publicity amounted to trademark use under Article 5. Article 5 requires use for marketing purposes, an act of applying or displaying the mark in one of the specified ways, and use sufficient to enable relevant consumers to recognize it as a trademark. The court therefore considered not only whether the wording matched the registered mark, but also when the trademark right arose and what function the wording performed.

The first issue was timing. Under Article 33(1), the trademark right arises on the date of publication for registration and lasts for ten years. The mark was published for registration on 16 September 2024. Most of the defendants' conduct occurred before that date, so the court held that those acts could not infringe a right that had not yet arisen.

For material that remained online after the publication date, the court applied the substantive test. It identified three requirements under Article 5(1): (1) use for the purpose of marketing goods or services; (2) an act of using the mark; and (3) use sufficient to enable relevant consumers to recognize the sign as a trademark. All three must be present. If any one is missing, the conduct is not trademark use for the purpose of Article 68.

The court emphasized that a trademark primarily identifies the source of goods or services, a function that supports fair and free competition. The third requirement therefore asks whether consumers could objectively understand the sign as identifying source. The court added that a third party's use of the same words needs to be prohibited when it “may cause relevant consumers to be confused as to the source of the goods or services, such that they cannot correctly identify the source through the trademark.” The concern is mistaken source, not the mere appearance of the same words. The judgment accordingly turns on how the wording functioned in context.

Applying the test, the court reviewed the posters, schedules, religious flags and ship photographs. References such as “Jin Shun An-hao” and “ship name: Jin Shun An” appeared in explanations of how the temple selected the ship's name by casting divination blocks (jiaobei, crescent-shaped blocks used to ask a deity for guidance), and of how the consecration and worship activities would proceed. The size, typeface and colour of “Jin Shun An” matched the surrounding text and did not make the wording stand out as a source identifier. The court therefore treated it as the ship's name, not as trademark use.

The court also rejected two further arguments. First, a later trademark application did not prove that the earlier ceremonial materials had used the wording as a trademark; registration examination and the Article 5 use inquiry apply different standards. Second, charging money did not by itself establish a marketing purpose. The stated amounts were a contribution toward the Pudu rite (a rite for wandering spirits) and toward outfitting the ritual ship — participation and preparation costs for a communal Taoist rite, not a price placed on “Jin Shun An” as a branded product.

The reasoning also suggests a broader policy concern: wang chuan and Wang-ke ceremonies are folk activities built up over decades by local temples, and their names may predate trademark registration and be shared across a community. If a later registration alone could bar others from mentioning the same name in a ceremonial context, the exclusive reach of a trademark right could extend into descriptive or ritual expression. This is an inference from the court's source-identification analysis, not an express holding that religious or community names are categorically exempt.

The court found that part of the defendants' conduct occurred before the mark's publication date, and that the rest was objectively insufficient to have consumers recognize “Jin Shun An” as the defendants' trademark. Neither category amounted to trademark use under Article 5. The Article 68(3) infringement claim therefore failed, as did the Article 69(1) request to stop and prevent infringement, and the court dismissed the claim. The plaintiff did hold a registered mark, but the defendants had not used “Jin Shun An” as a trademark. The line drawn by the judgment concerns the manner of use, not ownership of the words. The result does not mean the plaintiff's mark is invalid or that anyone may use “Jin Shun An” prominently as a brand for goods or services.

2. Contrasting case: same question, different answer

108 Min-Shang-Su No. 8, the “Lao Tian Lu” mark, concerned wording used on braised-food products and promotional materials. The plaintiff operated a well-known braised-food shop trading under “Lao Tian Lu.” The defendants used phrases translated as “second-generation self-created brand of Shanghai Lao Tian Lu” and “the shop of the second generation of Shanghai Lao Tian Lu.” One defendant's shop was less than 60 metres from the plaintiff's and displayed the wording prominently on an LED sign. The defendants characterized the wording as a factual description, not trademark use, and raised arguments based on bona fide prior use and use merely to indicate source. The court instead found trademark use and infringement.

The 108 court asked whether a sentence that appears descriptive nevertheless performs a trademark function. It found that “second-generation self-created brand of Shanghai Lao Tian Lu,” although presented as an explanation of lineage, “in substance indicates that the source of the goods has some connection with the operator of ‘Shanghai Lao Tian Lu.’” That association “has the same effect and function as a trademark linking goods to a particular sign to establish the connection between them.” The court therefore treated the wording as trademark use. The primary case reached the opposite result because “Jin Shun An” functioned only as the name of a ritual ship and event, not as a link between goods or services and a commercial source.

• Where and how the wording appeared. In the primary case, “Jin Shun An” appeared in descriptions of the ceremony and as the ship's name, with typeface matching the surrounding text and no visual prominence. In the contrasting case, the wording appeared on shop signs, billboards, standees, packaging and online advertising for braised-food products. The distinctive characters “Lao Tian Lu” were identical to the plaintiff's mark and were displayed in a way that could connect the goods with that source.
• Article 36(1) did not apply. The court noted that the provision requires the words to be displayed “by good-faith methods consistent with commercial trading practice… not as a trademark.” Because the defendants' wording already performed a substantive trademark function, that requirement was not met. By contrast, “Jin Shun An” was found from the outset not to be trademark use, so the 114 court had no need to decide Article 36.
• An evoked relationship with a well-known shop. The court found that “second generation” drew on consumer recognition of the older business and could suggest a franchise or affiliated relationship. The defendant traded less than 60 metres from the plaintiff, further increasing the likelihood of confusion. The evidence showed prior use for cakes and confectionery, but not prior use of “Shanghai Lao Tian Lu” for braised-food products, so the bona-fide prior-use defence failed. An order stopping or preventing infringement did not require proof of an intent to infringe, so the indicative-use argument failed too.
• A partner's misuse did not defeat a prevention claim. One defendant admitted that a cooperating online platform had displayed the plaintiff's mark incorrectly, but said the material had been removed. The court held that removal did not rule out recurrence and that the defendant bore responsibility for its partner's misuse, so prevention could still be ordered under Article 69(1).

The court ordered the defendants not to use marks identical or similar to the plaintiff's on the same or similar goods, and ordered the destruction or deletion of advertising boards, stickers, standees, packaging and web and Facebook content already in use. It partly dismissed broader requests to reduce all asserted marks to a shorter form and to require a newspaper notice.

The cases differ in three respects. First, the wording in the primary case appeared in descriptive ceremonial documents and event explanations, whereas the wording in the contrasting case appeared on signage and advertising for goods. Second, the wording in the primary case matched the surrounding typeface and was not prominent, while “Lao Tian Lu” was displayed so that consumers could connect it with the source of the goods. Third, “Jin Shun An” merely named the ritual ship, while the wording in the contrasting case linked the braised-food products to the established shop. These differences correspond to the statutory elements discussed below.

Part III: The Statute, Provision by Provision

The different outcomes can be traced to the elements of the relevant provisions.

Article 5 (Use of a Trademark). Trademark use requires three things: use in marketing or another commercial transaction; one of the forms of use listed in Article 5; and use sufficient to enable relevant consumers to recognize the sign as a trademark. The third requirement concerns source identification. Even when a person acts for a marketing purpose and actively displays a sign, consumers must still be able to understand it objectively as identifying source.

Two examples help show the boundary. Placing “Beethoven” before a mattress product name and marketing a “Beethoven latex mattress” is trademark use because the word does not describe the product's quality or function and consumers can understand it as a source identifier. By contrast, embedding the two characters meaning “extraction” in the phrase “organic essence extraction machine,” without different typeface or layout, is not trademark use because consumers would read the phrase as a whole rather than perceive those characters as a mark.

The primary court treated “Jin Shun An” like the second example: the wording matched the surrounding text, explained the ship's name and was not presented distinctively. The contrasting court found that “Shanghai Lao Tian Lu second generation” linked the goods to the older shop and therefore performed a source-identifying function.

Article 68 (Infringement of Trademark Right). This provision protects the source-identifying function of a trademark and relevant consumers against confusion. The infringement inquiry follows the Article 5 inquiry: the court first determines whether the conduct is trademark use, then considers the applicable questions of mark similarity, similarity of goods or services, and likelihood of confusion.

The primary case ended at Article 5 because the court found no trademark use, so it did not need to compare similarity or confusion. In the contrasting case, the distinctive wording appeared on similar braised-food products and prompted an association with a particular source, bringing the conduct within Article 68. Article 68(1), which concerns an identical mark used for the same goods or services, does not separately require proof of likelihood of confusion; subparagraphs 2 and 3 do. It is therefore important to identify the applicable subparagraph.

Article 36(1) (Descriptive-use limitation). The provision applies when wording describes the goods or services in good faith and is not used as a trademark. If the wording performs a trademark function, that requirement is not met. In the contrasting case, the defendants described the wording as an explanation of second-generation identity, but the court found that it linked the goods to a particular source, so Article 36(1) did not apply. In the primary case, the court had already found no trademark use and had no need to decide Article 36.

Whether asserting a right or defending a claim, the evidence should focus on how the wording appeared and what source-identifying function it performed. Prominent wording on goods or promotional signage may be treated as trademark use. Where wording is embedded in an event description and presented in the same typeface as the surrounding text, circumstances like those in the 114 case may support treating it as description rather than trademark use. The result remains fact-specific.