Using other's Trademark in Keyword Advertising may Constitute Unfair Competition － Intellectual Property and Commercial Court Civil Judgment 2025 Min- Shang-Su No. 26

01/30/2026

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I.              FACTS OF THE CASE

(1)      The plaintiff (TAHAN FURNITURE) owns the trademark ""大漢家具 TA Han  (Reg. No. 02009340); designated for use on beds, spring mattresses, retailing of furniture, and retailing and wholesaling of articles for daily use. The plaintiff asserted that the defendant (W. HORIZON), as a competitor, used "TA Han Furniture" as keyword for advertising on Google. When consumers typed in "TA Han Furniture", the defendant's official website will appear as one of the top results while using the title containing the term "TA Han". Furthermore, the defendant used the plaintiff's products name "踏實享睡 Firm and Enjoying Sleeping", and "相依相伴 Cuddle Together" in the advertisement content.

(2)      The plaintiff claimed that the defendant's acts will cause consumers to confuse the source; and will destroy the fair competition by leading the potential consumers of the plaintiff to enter the defendant's website.

(3)      The plaintiff filed a lawsuit against the defendant seeking damages in accordance with Paragraph 3, Article 69 of the Trademark Act, Article 30 of the Fair Trade Act and Paragraph 1, Article 88 of the Copyright Act.

 

II.           MAIN ISSUES OF THE CASE

(1)         Whether the keyword advertisement was set by the defendant.

(2)         Whether using plaintiff's trademark in the title and the content of the advertisement constitute trademark infringement.

(3)         Whether setting the keyword advertisement, using "TA Han" in the title, and using the plaintiff's products name in the content constitute a violation of Article 25 of the Fair Trade Act.

(4)         Whether the plaintiff's products names "踏實享睡 Firm and Enjoying Sleeping" and "相依相伴 Cuddle Together" are protected by Copyright Act.

 

III.        COURT'S HOLDINGS

(1)         The keyword advertisement is a joint action conducted by the defendant and its Thailand parent company.

The defendant argued that the keyword advertisement was arranged by its Thailand parent company; the parent company only used the defendant's name as invoicing entity in Taiwan; defendant did not participate in setting or supervising the keyword advertisement. However, the court held that the defendant was named as the advertiser, and the advertising fees were also paid by the defendant. Furthermore, the defendant was benefited from the keyword advertisement. The defendant should still be responsible for the conduct despite the defendant did not dominate the decision to set the keyword advertisement. 

(2)         The advertisement content does not constitute trademark infringement.

The plaintiff claimed that the defendant used the major part of the trademark, "TA Han", the consumers are likely to confuse that the products are provided by the defendant; hence, using the term "TA Han" in the advertisement title constitutes trademark use. Nevertheless, since the defendant only used the term "TA Han" in the title but not in the defendant's website; the defendant provided a clear source identification for the consumers by using its own trademark "Lunio". Relevant consumers with ordinary knowledge are unlikely to confuse the two sources under usual standard of care; therefore, the defendant's action does not constitute trademark infringement. 

(3)         The defendant setting the keyword advertisement, title, and content violate Article 25 of the Fair Trade Act.

The world became borderless with the help of the internet, information can be widely spread among the relevant consumer market rapidly. Compared to traditional method, competitors using online marketing method creates a more profound and widespread impact on the market. The court held that consumers with initial interest towards the plaintiff's products was led to defendant's website right after clicking the advertisement, reducing the plaintiff's opportunities to reach potential customers and increase the defendant's business opportunities, resulting in a substitution effect and constituting unfair competition by exploiting the plaintiff's goodwill. 

(4)         The product names does not meet the requirement of originality and are not protected by copyright.

"Originality" is one of the requirements of copyright protection. "Originality" does not mean completely original, but still need to show the author's personality and uniqueness. The court held that the term "踏實[1]", "相依相伴[2]" were existed terms, and were not created by the plaintiff. As for the term "享睡Enjoying sleep" is a homophone for "想睡sleepy," merely representing the enjoyment of sleeping. It was insufficient to express the author's uniqueness and personality. Furthermore, there were other mattress manufacturers used "享睡" as their products and brand names. The term "踏實享睡 Firm and Enjoying Sleeping" and "相依相伴 Cuddle Together" did not meet the requirements of originality and therefore not protected by copyright.

 

IV.        Key Takeaways

(1)         People benefit from specific acts may be deemed participants and may not be exempted from liability on the grounds that they did not lead, supervise, or control it.

In the present case, the court rejected the defendant's defense claiming that the keyword advertisement was arranged by its Thailand parent company. The court held the defendant liable based on the grounds that the defendant was benefited from the advertisement. Meanwhile, with the expansion of multinational corporations, the company structure became more and more complicated. When business conducting cross-border activities, it is important to maintain proper cooperation between departments; and comply with local laws so the business may lower the possible legal risks and enjoy the benefits brought by marketing strategy. 

(2)         Marketing impact has become more instant and wider, business should be more cautious when arranging marketing approaches.

Business' promotion content may be spread widely and rapidly through the internet. Business may also examine and benefit from the result in a short period of time. However, the impact on the market is also instant and less limited by geographic region. Therefore, the court or the authority is likely to determine that the market order is affected when reviewing business' conducts. While businesses enjoy the benefits that the internet brings to marketing, it is recommended to be more cautious of the far-reaching impact it may have on the market order. 

(3)         Business should avoid using identical or similar mark of another in the advertisement to prevent the risk of trademark infringement or violation of Fair Trade Act.

When making advertisement and promotion content, business should avoid using identical or similar marks of others; even using part of the mark. Otherwise, it will raise concerns of violating the Trademark Act, the Copyright Act, or the Fair Trade Act. Elements of each regulation are different; the court will examine the responsibility respectively and independently. Even though a specific act does not constitute trademark infringement, it is still possible to be held liable for damages, ceasing infringing use, or other penalties. 

(4)         Businesses that wish to protect their creative commercial achievements (such as product names, distinctive features, etc.), may consider applying for trademark registration to obtain broader protection.

Here, the product names "踏實享睡 Firm and Enjoying Sleeping" and "相依相伴 Cuddle Together" were determined not qualified for copyright protection. However, under the Trademark Act, the key element for trademark protection is "distinctiveness". If the mark or feature has inherent distinctiveness, or has acquired distinctiveness mark through marketing and extensive use; consumers will see it as an identification of source; the business may thoroughly protect the mark or features through trademark rights to prevent others using identical or similar marks.