According to “Examination Guidelines on Likelihood of Confusion” for trademarks, when two trademarks are considered similar, the overall impressions conveyed by the two trademarks are similar. If they are labeled on the same or similar goods/services, consumers with common knowledge and experience, who exercise a normal level of attention when shopping, may be confused about the two kinds of goods/services as coming from the same source or from different sources of related nature, or may not misidentify two trademarks as the same one, but are most likely to misidentify the goods/services offered under two trademarks as a series of goods/services from the same source, or misidentify the users of the two trademarks as having an affiliation, license, franchise or any other similar relationship.
In judging whether two trademarks are likely to cause confusion, eight relevant factors for consideration are listed below after referring to the relevant factors stated in domestic and foreign precedents:
(1) level strength of distinctiveness of the trademark(s);
(2) whether the trademarks are similar and if yes, the extent degree of similarity between them;
(3) whether the goods/services are similar and if yes, the extent degree of similarity between them;
(4) status of the diversified operation of the prior right holder;
(5) circumstances of actual confusion;
(6) the extent to which relevant consumers are familiar with the trademarks concerned;
(7) whether the applicant of the trademark at issue in question has filed such application in good faith; and
(8) other factors that may cause confusion.
The above trademark in dispute contains the Chinese part “阿里巴巴”, a device and the English part “ALIBABA”. The cited marks for the opposition are registration No. 1423424 “阿里巴巴云计算”(simplified Chinese) and No. 1413497 “ALIBABA CLOUD COMPUTING”, in which “云计算” and “CLOUD COMPUTING” are disclaimed due to lacking distinctiveness. The distinctive parts of the trademark in dispute and the cited marks are both “阿里巴巴” or “ALIBABA” which are also extremely similar. The general consumers will be confused about the two kinds of goods/services as coming from the same source or from different sources of related nature.
As to the designated goods, the trademark in dispute designated the goods about toys and game instruments in Class 28. The cited marks designated the goods containing “TV games” in Class 09. The consumers with common knowledge and experience will regard “TV games” a kind of game instruments. They have the same using purposes and functions. In addition, the main consumers for these two kinds of goods are children and teenagers. So, both trademarks are labeled on the same or similar goods due to the similar using purposes, functions, consumer groups and sales channels.
Although the plaintiff argued that the registrant of the cited marks failed to submit the evidence of use for “TV games”, it is not one of the factors to judge the likelihood of confusion of the trademarks. So, the trademark in dispute was deemed similar to the cited marks and thus was opposed.
Source: TIPO Newsletter issued on April 05, 2014
(http://www.tipo.gov.tw/public/epaper/113/ePaper113_ep8043.htm)
Delivered by: JAW-HWA INTERNATIONAL PATENT & TRADEMARK & LAWOFFICES
TAIPEI, TAIWAN
http://www.jaw-hwa.com.tw
