Amazon’s Alexa prevailed in trademark opposition, cancelling another trademark that features similar icon of dialogue bubble adopted by Amazon’s popular app

 On August 31, 2021, Taiwan’s IP Office (“TIPO”) determined that the registration of trademark held by WanPay Digital Marketing Co., Ltd. (“WanPay”) should be cancelled, for WanPay’s trademark might cause confusion with the registered icon held by Amazon Technologies Inc. (“Amazon”) for its popular Alexa App (Reg. No. 01885349, see below).

WanPay’s trademark (Reg. No. 02035098, see below), was filed on July 19, 2019, and granted on January 16, 2020, designated for use in goods under class 9, including computer hardware, network server, mobile phone application, personal computer, internet equipment, computer game software, tablet computer, computer software, computer terminals, etc. Amazon filed opposition against WanPay’s trademark on April 16, 2020, citing violation of Articles 30.1.10, 30.1.11, and 30.1.12 of Trademark Act.

TIPO found for Amazon, determining that WanPay’s trademark should be cancelled in accordance with Article 30.1.10 of Trademark Act, which provides that a mark shall not be registered if such a mark is “identical with or similar to another person’s registered trademark or earlier filed trademark and to be applied for goods or services identical with or similar to those for which the registered trademark is protected or the earlier filed trademark is designated, and hence there exists a likelihood of confusion on relevant consumers”.

 

1.      TIPO first recognizes that Amazon’s trademark is highly distinctive and unique, which would create strong impression among the relevant consumers. Because of such high distinctiveness and originality, ordinary consumers are more inclined to use it to identify the source of the supplied goods or services, and are more likely to be confused even though there is only minor degree of similarity.

2.      As to similarity, WanPay argues that the two trademarks should be dissimilar because Amazon’s trademark features a blue circular bubble without any further design, while WanPay’s trademark features two check marks right in the middle, which should be sufficient to distinguish its contested trademark from Amazon’s. Amazon argues that both trademarks present the image of a dialogue bubble, so they should be found visually and conceptually similar with each other. TIPO sides with Amazon, finding the two trademarks are similar despite the presence of two check marks in WanPay’s trademark, for the shape and contour of its trademark is almost the same as that of Amazon’s blue dialogue bubble, especially the protruding corner shown in the circular bubble.

3.      WanPay contends that the nature of goods designated by its trademark is dissimilar with those designated by Amazon’s. TIPO disagrees. Amazon’s cited trademark is designated for use in voice recognition software, voice control application, software for home device, computer software for personal data management, etc. The functions and purposes of these products, TIPO finds, are relevant and associated with those designated by WanPay’s opposed trademark. While WanPay argues that its business model (e-payment, virtual currency, etc.) is different from Amazon’s (voice recognition, digital personal assistant, etc.), TIPO finds such difference is less relevant in determining the similarity of the products designated by the trademarks.  

4.      Turning to the recognizability of trademark, TIPO again finds this factor tilts to Amazon’s favor, for Amazon’s trademark, through its continuous use in providing the highly successful service and product of Amazon Alexa, has been well recognized by the local consumers. To the contrary, the evidence of use submitted by WanPay is relatively thin. Hence, TIPO is of the view that Amazon’s trademark should be given more weight when evaluating the likelihood of confusion among the relevant public.

5.      Given the two trademarks are similar with each other, designated for use in relevant and associated products, Amazon’s trademark is highly distinctive and should be given more favorable light in view of its profound recognizability among the relevant customers, TIPO determines there might be confusion caused by WanPay’s trademark. Thus, WanPay’s trademark is found violating Article 30.1.10 of Trademark Act.     

 

 

Source: https://twtmsearch.tipo.gov.tw/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4cmk1K3hTblczNUhidzI3bHhGcEpHdz09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true