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I. [TW] Domain Plus Graphics Still Ruled Highly Similar: IPC Court Affirms Trademark Rejection
II. [TW] Supreme Court Clarifies Admissibility of Evidence for Patent Infringement
I. Domain Plus Graphics Still Ruled Highly Similar: IPC Court Affirms Trademark Rejection
The Intellectual Property and Commercial Court, in its Judgment No. 114-Xing(行)-Shang(商)-Su(訴)-47, affirmed the original disposition, ruling that if the dominant portion of a trademark is highly confusingly similar to a prior filed trademark, the likelihood of confusion among consumers cannot be ruled out, even with the addition of a domain suffix (“.com”) or ornamental graphics.
The plaintiff in this case (Mainland China’s Yunlianwang Technology Co., Ltd.) applied to register the trademark “
” for freight forwarding and transportation services in Class 39. After review, the Intellectual Property Office (TIPO) rejected the application on the grounds that the mark was confusingly similar to the cited registered trademark ” 
” and that the designated services highly overlapped. TIPO determined that because the two primary factors—”similarity of marks” and “similarity of services”—were highly satisfied, the legal threshold required for other auxiliary factors was directly lowered, thereby necessitating the refusal. Dissatisfied, the plaintiff filed a lawsuit, arguing that its mark was sufficiently distinguishable from the cited mark because it included the additional word “to” in the middle, featured the domain format “.com,” incorporated Simplified Chinese characters, and utilized an upper-and-lower curved swirl design, making it more than a purely descriptive phrase.
The Intellectual Property and Commercial Court rejected the plaintiff’s arguments. The Court pointed out that under the principle of overall observation, while a trademark must be evaluated as a whole, the consumer’s retained impressions and source identification still rely on the prominent and dominant portion of the mark. In this case, “.com” is a generic top-level domain, the Simplified Chinese characters “运连网” merely describe transportation services, and the upper-and-lower curved swirl lines visually wrap and emphasize “freight.” Therefore, “Gotofreight” constitutes the dominant portion of the entire mark.
Comparing this dominant portion with the cited trademark “GoFreight,” the beginning and ending are identical, with only the minor difference of whether “to” is present in the middle, resulting in a high degree of similarity in appearance, phonetics, and concept. The Court further clarified that “GoFreight” is an ungrammatical English combination that creates a novel impression, thereby possessing considerable distinctiveness rather than being merely descriptive. Since Taiwan’s trademark registration adopts a “first-to-file” principle, trademarks registered earlier are entitled to broader protection. Consequently, the Court found a clear likelihood of confusion and ruled against the plaintiff.
References
Hyperlink: Judicial Yuan Judgment System
Chun-Wei Lo
Patent and Trademark Counselor of RichIP Group
II. Supreme Court Clarifies Admissibility of Evidence for Patent Infringement
In Supreme Court Civil Judgment No. 1778 of 2024, the Taiwan Supreme Court vacated in part and remanded a patent infringement case involving glass-cutting wheel products. What makes this decision noteworthy is not only the underlying patent dispute, but also the Court’s reminder that evidentiary procedure can have a very real impact on both infringement findings and damages.
Although the lower court had already ruled on certain issues, including inventive step and design patent infringement, the Supreme Court found that the proceedings on Patent 2 infringement and damages still required further procedural scrutiny.
Two points stand out in particular. First, a measurement report commissioned by a party outside the litigation is not automatically excluded merely because it is not a court-appointed expert opinion. Depending on how the report was prepared and argued in the case, it may still be assessed as documentary evidence. Second, where customs records are relevant to calculating damages but also involve trade secret concerns, courts should consider procedural tools such as confidentiality orders to balance confidentiality with the opposing party’s right to be heard, rather than relying on excessive redaction that undermines meaningful argument.
Overall, the decision offers a practical reminder: in patent litigation, procedural issues are not always secondary. How evidence is introduced, reviewed, and protected may significantly influence the final outcome.
References
Hyperlink: Judicial Yuan Judgment System
Frank Tseng
Patent Counselor of RichIP Group
III. Does a “Mere Full Company Name” Possess Trademark Distinctiveness? —Judgment of the Intellectual Property and Commercial Court
This case (i.e., 2025 Administrative Trademark Judgment No. 36 of the Intellectual Property and Commercial Court) involves an administrative litigation triggered by “Taiwan Zhenyuan Business Consulting Co., Ltd. (hereinafter the Plaintiff),” which attempted to register its “full company name” directly as a trademark without any font or graphic design. However, the Taiwan Intellectual Property Office (hereinafter the Defendant) rejected the application on the grounds of “lacking distinctiveness. “Dissatisfied with this rejection, the Plaintiff filed an administrative appeal, which was dismissed, prompting the Plaintiff to file the current administrative litigation with the Intellectual Property and Commercial Court (hereinafter the IPCC).
The judgment in this case establishes the practical view that “a full company name devoid of any stylization generally lacks inherent trademark distinctiveness.”
IPCC’s Opinion:
The IPCC’s opinion aligns closely with that of the Defendant, holding that according to general social perception, the primary function of a mere full company name is to represent a “business entity.” It cannot lead consumers to directly perceive it as a sign indicating the source of goods or services. Therefore, the Plaintiff’s lawsuit was dismissed. The IPCC’s specific reasoning is as follows:
- Mere full company names lack inherent distinctiveness: The trademark in this case consists of simple horizontally written Chinese text “Taiwan Zhenyuan Business Consulting Co., Ltd.”, where “Co., Ltd.” merely indicates the corporate organizational form. The overall primary impression given to consumers is a “representation of a business entity’s name,” which prevents people from directly recognizing it as a trademark indicating the source of services. Therefore, according to Article 29, Paragraph 1, Subparagraph 3 of the Trademark Act, it indeed lacks trademark distinctiveness.
- Compliance with the principles of legal reservation and proportionality: The phrase “other signs devoid of distinctiveness” in the Trademark Act is an indeterminate legal concept, and legislators intentionally left room for interpretation to the administrative agency. The establishment of Examination Guidelines by the Intellectual Property Office to unify objective examination standards does not violate the principle of legal reservation. Furthermore, the Guidelines do not completely exclude company names from having inherent distinctiveness. If a company name undergoes special design in typography or arrangement, it still has the opportunity to be deemed distinctive. In this case, the Plaintiff used the most typical plain-text full name, which led to the finding of lacking distinctiveness; therefore, it does not violate the principle of proportionality.
- Compliance with the principle of equality: The examination standards distinguishing “full company names” from “trademarks” have been operating in practice for over 15 years and are familiar to and followed by users of the trademark system. Based on the principle of administrative self-binding and the principle of equality, the Defendant’s rejection of mere unstylized full company names is consistent with past determinations, constitutes no discriminatory treatment, and accords with general social perception and market trade practices.
Trademarks and company names have different legal functions: The protection purposes of the Trademark Act and the Company Act are different. In addition to protecting trademark rights, the legislative purpose of the Trademark Act also takes into account consumer interests and fair market competition. To avoid imposing excessive restrictions on competitors, the current Trademark Act intentionally separates the concepts of “trademarks” and “company names. “The restrictions on the scope of protection are relaxed only in special exceptions involving “well-known trademarks.” One cannot simply conclude that an unstylized full company name as a whole is equivalent to a trademark just because the company name contains original text.
References
Hyperlink: Judicial Yuan Judgment System
Jason Hung
Patent Attorney of RichIP Group