On July 22, 2026, Yahoo Inc. successfully invalidated a registered trademark “A虎”, convincing Taiwan’s IP Office (“TIPO”) that such contested trademark would cause confusion with its well-known “YAHOO!” and “雅虎” trademarks (see below).
The contested trademark, “A虎” (Reg. No.
02166976, see below), was filed by Charisma Technology Co., Ltd. (“Charisma”)
on December 18, 2020, and registered on September 1, 2021. The mark covered
services in Class 42, including computer data processing, web design, online
data storage services, software as a service (SaaS), and cloud computing. Yahoo
Inc. filed invalidation action on July 4, 2024, alleging that the registration
of “A虎” violated Articles 30.1.10, 30.1.11, and 30.1.12 of Trademark Act.
1.
Article 30.1.11 of Trademark
Act provides that a mark shall not be registered if such a mark is identical
with or similar to another person’s well-known trademark or mark, and hence
there exists a likelihood of confusion in the relevant public or a likelihood
of dilution of the distinctiveness or reputation of the said well-known
trademark or mark.
2.
Here, according to the evidence
submitted by Yahoo Inc., including the continuous and extensive use of
trademark in its internet search services, e-commerce, mobile phone app, subscription
services, and TIPO’s own decisions throughout the period of 1998 to 2020, “雅虎” has established
well-known status in the field of world wide web information service Taiwan.
3.
On similarity, ordinary
consumers would pronounced the contested trademark like [eiˈhu] or [aˈhu], while Yahoo Inc.’s “雅虎” may sound like [jaˈhu]. Visually, both trademarks end with the same Chinese character “虎” (“Hu”). Hence,
visually and phonetically, “A虎” is similar to the well-known “雅虎” trademark.
4.
Although both “A虎” and “雅虎” have no specific
meaning and are distinctive, due to Yahoo Inc.’s long term and extensive trademark
use, consumers in Taiwan should be more familiar with “雅虎” than “A虎”.
5.
Moreover, the services covered
by the contested trademark, such as computer data processing, cloud computing,
etc., are quite related to Yahoo Inc.’s, such as internet search engine service
and email services.
In view of the above, given the well-known status
of Yahoo Inc.’s trademark, the visual and verbal similarity, the strong brand
recognition of “雅虎” among the relevant consumers, and the relatedness between the
designated services of trademarks, TIPO concluded that Charisma’s “A虎” would cause
confusion with Yahoo Inc.’s ”雅虎”. The contested trademark was cancelled accordingly.
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