April 09, 2026 ©️ Copyright – Goldkeen International Property Office
Introduction
A well-known Tainan restaurant brand, A-Xia Restaurant (阿霞飯店), recently changed the name of its official Facebook page, sparking widespread discussion.
This was not a simple rebranding decision, but the result of a nearly five-year internal trademark dispute within the family business.
The case highlights a growing issue faced by many Taiwanese businesses: how trademark rights are allocated and used across physical operations and digital channels.
Background: A Family Dispute Over Trademark Rights
At the core of the dispute lies a division of business control between different generations.
One party controlled the physical restaurant operations and trademark rights under Class 43 (restaurant and hospitality services).
Another party controlled online operations and trademark rights under Class 35 (e-commerce and retail services).
This division led to overlapping trademark usage and legal conflict.
Initially, the court awarded damages of NT$500,000. On appeal, the Intellectual Property and Commercial Court increased the compensation to NT$4.5 million, and the case has since been remanded for further trial.
For many traditional businesses undergoing succession or digital transformation, this case serves as a serious warning.
Legal Issue: Why You Can Own the Business but Not the Name
Under Article 33 of the Taiwan Trademark Act, trademark rights are exclusive.
In this case, even though one party operated the physical restaurant, the court found that trademark ownership belonged to another party, and the license granted was limited to physical use only.
As a result, using a similar trademark on digital platforms such as Facebook or Instagram for marketing purposes was deemed to potentially constitute trademark infringement under Article 68.
👉 Goldkeen Insight:
Many business owners mistakenly assume that operational control automatically includes trademark usage rights. In reality, offline rights do not equal digital rights unless clearly defined in written agreements.
How Businesses Can Build a Strong Trademark Protection Strategy
To avoid similar disputes, businesses should establish a comprehensive trademark protection framework.
Strengthen Trademark Portfolio Across Classes
Many companies register trademarks only in their core business class, such as Class 43 for restaurants, while overlooking related categories.
In practice, additional classes are often critical.
For example, Class 35 covers e-commerce and advertising, enabling online marketing and sales.
Class 30 applies to packaged goods, such as frozen meals or retail food products.
Defensive filings—such as registering similar names or variations—can also prevent competitors from free-riding on brand reputation.
Define Licensing Scope and Digital Rights Clearly
Whether in family businesses, franchising, or partnerships, contracts must clearly define:
- The scope of trademark use
- Authorized channels, including digital platforms (e.g., Facebook, Instagram, LINE)
- Advertising rights, such as Google Ads or Meta campaigns
- Ownership of digital assets, including social media accounts and customer data
Without clear agreements, disputes over digital branding are increasingly likely.
Understand the Limits of “Prior Use” Defense
Some businesses rely on the concept of good-faith prior use under Article 36 of the Taiwan Trademark Act.
However, in practice, this defense has a high threshold and is limited to the original scope of use.
If a business expands from offline operations to nationwide or online markets, it may exceed the protected scope.
👉 The safer approach is early trademark registration under the first-to-file principle.
Establish Monitoring and Evidence Systems
Trademark protection does not end with registration.
Businesses should implement ongoing trademark monitoring, identifying similar applications and filing oppositions when necessary.
At the same time, companies should retain evidence of brand use and investment, such as advertising records and media coverage. These materials are essential in demonstrating trademark value and calculating damages in litigation.
Conclusion
The A-Xia Restaurant case demonstrates a fundamental truth:
Trademark rights define the rules of brand ownership—regardless of family ties or operational control.
In today’s business environment, trademarks are not decorative elements—they are legal shields that protect brand value.
For businesses planning succession, expansion, or digital transformation, establishing clear trademark ownership and usage rights is essential.
Need Help with Trademark Strategy?
Goldkeen provides:
- Trademark registration and portfolio planning
- Licensing agreement review and drafting
- Digital brand and IP risk management
Contact us today to secure your brand’s legal foundation.
