Microsoft’s “HALO” prevailed in its opposition against “HaloBot”

On February 26, 2021, Taiwan’s IP Office (“TIPO”) sided with Microsoft, ruling that “HaloBot” should be cancelled due to similarity with Microsoft’s “HALO”

Makeblock Co. Ltd. (“Makeblock”), a global STEAM education solution provider based in China, filed trademark application for “HaloBot” on August 30, 2019, designated for use in games consoles, toy building blocks, game console controllers, toy robots, and other products in class 28. Makeblock’s application for “HaloBot” was granted on April 1, 2020 (Reg. No. 02050354, see below), and Microsoft filed opposition on June 30, 2020.  

 

According to Microsoft, Makeblock’s “HaloBot” is confusingly similar with Microsoft’s “HALO” (Reg. No. 01111964, see below), which violates Article 30.1.10, 30.1.11, and 30.1.12 of Trademark Law.

 

TIPO ruled in Microsoft’s favor, based on the following reasons:

1.      Article 30.1.10 of Trademark Law provides that a mark shall not be registered if such a mark is similar with other senior trademark that is applied for use in similar goods or service, and therefore might cause confusion among the relevant consumers.

2.      As to similarity, TIPO found “HALO” and “HaloBot” visually and verbally similar with each other. Although “HaloBot” further includes “Bot”, TIPO considers “Bot” does not create much distinction. It is because “Bot” refers to “robot”, which would not be distinctive when being used in products such as toy robots for kids.  

3.     As to the designated goods, TIPO found Microsoft’s “HALO” is also applied for use in products such as toys, game consoles, stuffed toys, game cards, board games, game appliance, electronic handheld game consoles, etc. These products, TIPO opined, are similar with products designated by Makeblock’s “HaloBot” for they both serve similar recreational and entertaining functions for kids.

4.     Turning to the strength of the trademark, TIPO noted that Microsoft’s “HALO” is distinctive if used in toy and gaming device for kids. Additionally, Microsoft’s “HALO” has been used on its toys and relevant products for years, so "HALO" as a trademark is already known by relevant consumers through the continuous sale and promotion of its products. Therefore, consumers shall be more familiar with “HALO”, which shall be awarded with better protection over the similar trademark “HaloBot.”

In sum, TIPO considers “HaloBot” similar with “HALO”, so the registration of “HaloBot” would cause confusion with Microsoft’s “HALO” among the relevant consumers. As a result, TIPO cancelled the opposed trademark "HaloBot" accordingly.

Source: https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4bzkvbVVzTkxPd1k0UzdiWTdzZjd5dz09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true