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Does Using Other's Trademark As Entity Name Constitute Trademark Use?－ Intellectual Property and Commercial Court Civil Judgment 2025 Min- Shang-Su No. 20
I. FACTS OF THE CASE
(1) The plaintiff (PHILHARMONIC RADIO TAIPEI CO., LTD) owns the trademark "愛樂" （meaning "Philharmonic"）designated used on services such as radio program production and arranging concerts. The plaintiff claimed that the trademark "愛樂" has been recognized by the relevant consumers and become a well-known trademark.
(2) The plaintiff asserted that the defendant (Taiwan Philharmonic Association), as a competitor, used the trademark "愛樂" in its entity name without authorization and used in connection with organizing concert events. Therefore, the use of the trademark is likely to cause confusion among the relevant consumers and constitutes unfair conduct.
(3) The plaintiff then filed a lawsuit against the defendant, seeking removal of the infringement and cessation of the use of the trademark "愛樂" as the defendant's entity name, in accordance with Paragraph 1, Article 69 of the Trademark Act and Article 29 of the Fair Trade Act.
II. MAIN ISSUES OF THE CASE
(1) Whether using the trademark "愛樂" as the defendant's entity name and operating as "台灣愛樂協會"（Taiwan Philharmonic Association）constitute trademark use.
(2) Whether the trademark "愛樂" had become well-known when the defendant was established; and whether the defendant violated Item 1 or 2 of Article 70 of the Trademark Act, or whether Item 2 of Article 70 may be applied by analogy.
(3) Whether using the trademark "愛樂" as the defendant's entity name and operating as "台灣愛樂協會" (Taiwan Philharmonic Association) violate Article 25 of the Fair Trade Act.
III. COURT'S HOLDINGS
(1) Using the trademark "愛樂" as entity name and operating as "台灣愛樂協會"（Taiwan Philharmonic Association）does not constitute trademark use.
1. The court held that, in determining trademark use, a comprehensive assessment should be made of factors such as the layout and arrangement of graphic images, digital audio-visual or electronic media, the font and typeface, the size of the characters, color, and whether the design possesses any particular distinctiveness. Furthermore, whether the nature of such use is sufficient for consumers to identify the source of the goods or services, as well as whether the purpose of use involves any intent to free-ride on another’s goodwill should be considered.
2. In this case, the court held that the defendant’s use of the trademark as an entity name does not constitute trademark use under Article 5 of the Trademark Act. Although the defendant used "台灣愛樂協會"（Taiwan Philharmonic Association）to organize concerts, the defendant listed the contact number, included the term "Host by…", and did not specifically emphasized the term "愛樂". Therefore, the court concluded that the defendant used the trademark "愛樂" in accordance with commercial practices in good faith to indicate its own name as the host of the concerts.
(2) The trademark had not become well-known when the defendant was established; and Item 2 of Article 70 shall not be applied by analogy.
1. The court held that the trademark "愛樂" has less distinctiveness since the term "愛樂" is widely used in the music industry based on its meaning. Furthermore, the evidence submitted by the plaintiff to prove well-known primarily pertains to "台北愛樂電台（Philharmonic Radio Taipei）" and "愛樂電台（Philharmonic Radio）," which does not rely solely on the trademark "愛樂" to distinguish its source. Therefore, the court denied the assertion that the trademark has become well-known and widely recognized by the relevant consumers.
2. Although the plaintiff alternatively argued for the analogous application of Item 2, Article 70 of the Trademark Act in cases where the trademark is not recognized as a well-known trademark, the court clarified that the protection for non-well-known trademarks under Item 2, Article 70 of the Trademark Act was deliberately removed in the 2011 amendment to prevent trademark holders from abusing their rights. Therefore, there is no basis for applying this provision by analogy.
(3) Using the trademark "愛樂" as entity name and operating as "台灣愛樂協會"（Taiwan Philharmonic Association）does not violate Article 25 of the Fair Trade Act.
The court held that the defendant had displayed its full name to indicate itself as the concerts host and did not solely use the trademark "愛樂". The defendant also used the existing terms "Classical Music Station" and "Classical" in accordance with the provided services, which are different from the plaintiff's actual use, "台北愛樂電台（Philharmonic Radio Taipei）," "愛樂電台（Philharmonic Radio）" and "台北愛樂 （Philharmonic Taipei）" and unlikely to cause confusion among consumers. Accordingly, the defendant's conduct did not constitute actively deceiving or passively concealing material transaction information to mislead others into making transactions; therefore, there is no violation of Article 25 of the Fair Trade Act.
IV. Key Takeaways
(1) The core of trademark use is whether the use creates an identification of source to consumers; trademark holders should be aware when using trademarks and asserting infringement.
Through this case, we can see that the core of trademark use is whether the use allow consumers to identify the source of the goods and services. Whether the display and overall arrangement in actual use creates an eye-catching distinctiveness will be taken into account. The trademark holder, whether using the trademark personally or asserting infringement by others, must first confirm whether the manner in which the trademark appears has enabled consumers to recognize it as an indication of the source of goods or services. Not all at will use of the trademark wording constitutes use of a trademark. Otherwise, there is a risk of unfavorable findings in litigation.
(2) Using existing or industry-related term as trademarks owns less distinctiveness and limited protection. Trademark holders should carefully consider when conceiving a trademark.
When a business or individual is creating a trademark, it is inevitable that they will use terms related to the designated goods or services. However, the Taiwan Intellectual Property Office (TIPO) is likely to reject the registration on the grounds of lacking distinctiveness when existing or industry-related terms are used as trademarks. Even if registration is granted, the scope of protection will be relatively limited due to the low trademark distinctiveness. Therefore, it is recommended to choose arbitrary, fanciful marks, or non-industry-related term as trademark in order to gain a broader protection.
(3) Trademark holders should keep the registered trademark consistence with the actual use of the trademark to better establish distinctiveness and provide evidence to prove well-known status.
The court denied the evidence provided by the plaintiff to prove the well-known status of the trademark on the basis that the plaintiff often presented the trademark "愛樂" together with other terms. Accordingly, trademark holders should evaluate how the trademark will actually be used before application. After registration, trademark holders should also actively use the trademark consistently with the registered mark. By doing so, the trademark may establish a stronger distinctiveness, acquire broader protection, and prevent the trademark from being diluted.
(4) Using other's well-known trademark as entity names should be avoided. Even when using other's non-well-known trademarks as entity names, such use should be limited solely to the purpose of describing one’s own entity name to prevent consumers from associating it with the trademark holders, and to reduce the likelihood of infringement or Fair Trade Act violation.
Using other's well-known trademark as entity name without authorization is explicitly prohibited by the Trademark Act and should be avoided to prevent litigation. In the event of using other's non-well-known trademark as entity name, caution should be exercised to ensure the use is solely for describing one’s own entity name, or used in conjunction with other terms to prevent any association with others' trademarks. Otherwise, there is a risk of constituting trademark infringements or violating the Fair Trade Act.
In addition, since the determination of well-known marks involves the examination of multiple objective factors, which may create uncertainty, it is recommended to avoid using others' trademarks as entity names in order to enjoy full control and flexibility in commercial activities and to be free from constraints imposed by others' trademark rights.