On March 16, 2020, PayPal Inc. (“PayPal”), the registrant of series “PayPal” and “PAYPAL” trademarks in Taiwan (Reg. No. 00191043, 00191961, 01257705, 01354987, 01766166, and 02046601, see below), filed opposition against Paypaycloud Fintech Co. Ltd. (“PFC”), alleging that the registration of PFC’s trademark would cause confusion with PayPal’s aforesaid famous trademarks.
The contested trademark, PFC’s No. 02030281 trademark (see below), was filed on March 15, 2019, and granted on December 16, 2019, designated for use in services under class 35, including department store, convenience store, establishing computer information database, management of computer files and database, maintenance and renewal of registered data, online shopping, etc.
1.
Article 30.1.11 of Trademark
Law provides that a trademark shall not be registered if such a trademark is being
identical with or similar to another person’s well-known trademark or mark, and
hence there exists a likelihood of confusion on the relevant public or a
likelihood of dilution of the distinctiveness or reputation of the said
well-known trademark or mark.
2.
Based
on the evidence submitted by PayPal, including the worldwide trademark
registrations of “PayPal” and “PAYPAL”, the adoption of PayPal’s service in a
wide range of local businesses, including the popular B2B online trading
platform TaiwanTrade, and the relevant news reports, TIPO is convinced that PayPal’s
cited trademarks are well-known in the area of third-party payment service.
3.
As
to similarity, TIPO notes that “PAYPAYCLOUD” would be perceived as combination
of “Pay”, “Pay”, and “Cloud”. Since “Cloud” carries the meaning of cloud
service, it would be less distinctive when being used in service like computer
database. Accordingly, “PAYPAY” would constitute the dominant portion of PFC’s
contested trademark, and TIPO opines that no matter it is “PayPal” or “PAYPAL”,
they are both similar with “PAYPAY”.
4.
In
addition, TIPO finds that PFC’s contested trademark is applied for use in
service that is similar with or relevant to the designated service of PayPal’s
well-known trademarks, because the latter is used to facilitate the former, and
both services are related to meeting consumer’s demands for processing online transaction
and payment.
5.
TIPO
also finds that “PayPal” as a trademark is highly unique, since it is not a
mere combination of common words. Further, TIPO notes that through PayPal’s
continuous use and marketing, “PayPal” has achieved the status of well-known
trademark and the consumers would be more familiar with PayPal’s trademark.
In view
of the above, considering that “PAYPAYCLOUD” is similar with “PayPal”, that it
is applied for use in similar services, that “PayPal” and “PAYPAL” are well-known,
and that consumers are more familiar with PayPal’s famous trademarks, TIPO
determines that registration of PFC’s contested trademark might cause confusion
with PayPal’s well-known trademarks. Therefore, “PAYPAYCLOUD” is cancelled by
TIPO in view of violation of Article 30.1.11 of Trademark Law.
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