“Matrix” is a sci-fi action movie produced by Warner Brother in 1999. It grossed over more than hundreds of millions of dollars in the global box office. In 2003, its sequel “The Matrix: Reload” and treequel “The Matrix: Revolution” were released and similarly achieved commercial success worldwide. In 2002, Warner Brother obtained trademark registrations for “MATRIX”, “MATRIX RELOADED”, “ENTER THE MATRIX”, and “MATRIX: THE MOVIE” in Taiwan (Reg. No. 01067525, 01057388, 01060786, and 01060785).
On January 9, 2020, Taiwan’s ASUSTEK Computer Incorporation (“ASUSTEK”) filed trademark application for its “AniMe Matrix”, and was granted on August 16, 2020 (no. 02078067, see below), designated for use in class 9, including recorded computer operating procedures, desktop, notebook, computer software, computer program, computer hardware, etc. Warner Brother filed opposition on November 13, 2020, alleging violations of Article 30.1.10, 30.1.11, and 30.1.12 of Trademark Act.
On July 31, 2024, Taiwan’s IP Office (“TIPO”) sided with ASUSTEK, finding no violation of the cited Trademark Act:
1. In terms of similarity, although Warner Brother’s cited trademarks and ASUSTEK’s contested trademark all share the same word “Matrix/MATRIX”, TIPO find such similarity would not increase likelihood of confusion, because “Matrix” has commonly been used by others as part of trademark. As such, ordinary consumers would not solely use “Matrix” to identify the source of goods or services upon seeing trademarks that contain “Matrix”. Additionally, as the initial word of ASUSTEK’s trademark is noticeably different from that of Warner Brother’s, TIPO concluded that such difference should be sufficient for the consumers to distinguish ASUSTEK’s “AniMe Matrix” from Warner Brother’s cited trademarks. In sum, the degree of similarity between the contested trademark and Warner Brother’s cited trademarks is low.
2. As to similarity between the designated products, TIPO noted that some of the designated products of Warner Brother’s cited trademarks cover goods such as computer game discs, computer program, computer game software, video games, etc., and are similar to or associated with those designated by ASUSTEK’s contested trademark.
3. Warner Brother argued that its cited trademarks shall be well-known trademarks since they were used in the “Matrix” movie franchise, which were highly popular in Taiwan. However, TIPO found such statements insufficient, and opined that Warner Brother should provide more concrete evidence, such as sales of merchandise, invoices, advertisements, marketing materials, etc. Since Warner Brother has not been able to provide the requested evidence throughout the opposition proceeding, TIPO did not side with Warner Brother on this issue.
4. As to the strength of the trademarks, TIPO found both ASUSTEK’s “AniMe Matrix” and Warner Brother’s cited “MATRIX” trademarks possess considerable distinctiveness.
5. In view of the above, considering that there is no evidence proving Warner Brother’s cited “MATRIX” trademarks are well-known, that the similarity between ASUSTEK’s “AniMe Matrix” and Warner Brother’s cited “MATRIX” trademarks is low, that both possess distinctiveness, and that there is no evidence showing actual confusion, TIPO opines that registration of the contested trademark will neither cause confusion with Warner Brother’s cited trademarks, nor will harm their distinctiveness or reputation. Hence, there should be no violation of Article 30.1.10, 30.1.11, and 30.1.12 of Trademark Act.
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