Date: 02 October 2026

【Volume 177】

In recent years, e-commerce and social media marketing have become central arenas for corporate branding. However, when businesses in the same industry adopt similar wording as trademarks, domain names, or platform account names, disputes over trademark infringement can readily arise. In a trademark infringement action brought by the well-known women’s apparel brand “iROO” against the emerging functional apparel brand “AROO,” the Intellectual Property and Commercial Court (IPCC) of first instance found that the defendant had infringed the plaintiff’s trademark rights and ordered the defendant to cancel its domain name registration. However, the case took a decisive turn upon appeal before the IPCC of second instance.

In 2023 Min Shang Shang Zi No. 8 Civil Judgment of the IPCC, the appellate court vacated the portions of the first-instance judgment ordering the defendant to cancel its domain name registration and cease using the disputed wording in its account names, and instead dismissed the corresponding claims of the plaintiff in those respects. This resulted in a significant partial reversal. In this case, the appellate court provided rigorous and potentially precedent-setting guidance on several key legal issues, including whether the use of wording in domain names and social media account names constitutes “trademark use,” the threshold for recognizing a well-known trademark, and the difference in evidentiary weight between a jointly commissioned expert survey and a market survey commissioned unilaterally by one party. The judgment offers valuable guidance for businesses in developing their online branding strategies and formulating litigation strategies in trademark disputes.

Case Facts and the Appellate Court’s Reversal

The plaintiff, iROO International Co., Ltd. (“iROO”), established the “iROO” brand in 1999 and owns three registered trademarks, including Registration No. 00889945 (collectively, the “trademarks at issue”). The brand has developed an extensive network of physical retail stores throughout Taiwan. The defendant, Wei I International Development Co., Ltd. (“Wei I”), operates the “AROO” functional-apparel brand, and its responsible person owns the “AROO” trademarks incorporating a Spartan helmet design (the “defendant’s trademarks”). Wei I subsequently registered the domain name “aroo.com.tw” for its official website and used “AROO” as its account name on Shopee and social media platforms including Facebook, Instagram, and YouTube. It also sold products bearing the wording “AROO” separately on the products themselves and at retail displays. iROO alleged that Wei I’s conduct constituted trademark infringement under Article 68, Paragraph 1, Subparagraph 3 of the Trademark Act and dilution of a well-known trademark under Article 70, Subparagraph 2 of the Act. Accordingly, iROO sought damages and an order requiring the cancellation of the domain name registration.

The court of first-instance ruled in favor of iROO. Following Wei I’s appeal, the appellate court held that Wei I’s separate use of “AROO” on its products and in retail displays constituted trademark infringement. However, it found that the trademarks at issue did not meet the threshold for recognition as “well-known trademarks” and that the mere use of “AROO” in a domain name and account names did not constitute trademark use. It therefore reversed and vacated the portions of the first-instance judgment ordering cancellation of the domain name and accounts.

Key Comparison of the Trademarks

Trademarks At Issue
Trademark Specimen
Trademark Holder	iROO International Co., Ltd.
Registration Nos.	00889945	00121826	01501234
Designated Goods／Services	Class 25 Underwear, pajamas, swimming suits, shirts, men's suits, overcoats, coats, sportswear, boots and shoes.	Class 35 Retail services relating to fabrics, clothing, and clothing accessories.	Class 35 Advertising planning, design, production, agency and promotional services, and distribution of advertising materials, etc.

 

Defendant’s Trademarks
Trademark Specimen
Trademark Holder	Chen, Hung-Han
Registration Nos.	01995972	01996371
Designated Goods／Services	Class 25 Sportswear; women’s dress; menswear; clothes.	Class 35 Dissemination of advertising matter; advertising; presentation of goods on communication media, for retail purposes; import-export agency services; online retail and wholesale services featuring clothing and related goods, etc.

Analysis of the IPCC’s Three Key Findings

1. The Boundary of “Trademark Use” in Domain Names and Account Names

Conduct Constituting Trademark Use: 

Wei I prominently displayed the enlarged wording “AROO” on its official website and online storefront, used “AROO” as a prefix to the names of displayed products, and printed the wording on the front of its apparel. Such use was sufficient to enable consumers to identify the source of relevant goods or services and therefore constituted trademark use under Article 5 of the Trademark Act.

Conduct Not Constituting Trademark Use:

Where “aroo.com.tw” was merely registered as a domain name, or “AROO” was used solely as the name of an online-store account or social media page, such use, under ordinary commercial understanding, served merely to identify the business entity and distinguish it from other businesses. Consumers would not directly perceive it as an indication of the source of goods or services. Accordingly, such use did not constitute trademark use.

2. Standards for Admissibility of Market Survey Reports

Evidentiary Weight of a Third-Party Surveyor Jointly Selected by the Parties:

During the litigation, the parties jointly selected the Taiwan Development & Research Academia of Economic & Technology to conduct in-person and online surveys nationwide. After excluding respondents who answered “don’t know” or “unable to answer,” more than 70% of online respondents and more than 60% of in-person respondents believed that the two marks originated from the same or related sources. The IPCC admitted the survey results and found the marks similar and likely to cause confusion.

Substantive Meaning of “Principle of Separate Observation at Different Times and Places”:

The IPCC clarified that this principle is intended to remind the examiner to consider actual purchasing circumstances, in which consumers make selections based on an imperfect and blurred recollection of the marks. It does not require a survey to be conducted strictly at different times and in different locations. The court therefore considered the survey sufficiently representative and admitted it into evidence.

Unilaterally Commissioned Surveys Are Unlikely to Be Accepted:

In the first instance proceedings, the defendant independently commissioned the China Industrial & Commercial Research Institute to conduct a market survey, which purportedly showed that nearly 90% of respondents could distinguish between the marks. However, the survey was commissioned unilaterally and was neither conducted under court supervision nor subject to scrutiny by the opposing party. In addition, the survey sampled respondents only in Taipei City and New Taipei City. Accordingly, the IPCC found that it lacked objectivity and declined to admit it into evidence.

3. Strict Evidentiary Threshold for Establishing a Well-Known Trademark:

Although iROO submitted media reports, evidence of its sponsorship of the FISU World University Games, and its own revenue statements, the IPCC found that the self-prepared data lacked objective corroboration. Moreover, the market survey showed that only approximately 30% of respondents were aware of the company’s trademarks, making it difficult to conclude that the marks had attained the level of recognition among the general public required for well-known trademark status. Because the trademarks at issue did not meet the threshold for recognition as well-known trademarks, the defendant’s use of “AROO” as a domain name and account name did not constitute dilution under Article 70, Subparagraph 2 of the Trademark Act. Accordingly, iROO’s request for cancellation of the domain name lacked legal basis.