Alibaba wins trademark case against O’Pay over mark similarity
E170316Y2．E170315Y2 | Apr. 2017（E209）
Alibaba Group (hereinafter “Alibaba”) filed invalidation with Taiwan IPO against O’Pay Electronic Payment Co., Ltd.’s (hereinafter “O’Pay”) ALL PAY ALL付寶 and device mark (hereinafter the “mark in dispute”) on the ground that the mark in dispute is similar to Alibaba’s 支付宝 Alipay.com & device and ALI PAY mark (hereinafter “Alibaba’s marks”) but the invalidation was not sustained. Alibaba thus filed an administrative appeal with the Ministry of Economic Affairs (MOEA), and MOEA vacated Taiwan IPO’s disposition and sustained the similarity between the mark in dispute and Alibaba’s marks and recognized the trademark fame of Alibaba’s marks. O’Pay took its turn to institute an administrative lawsuit on this matter and the Taiwan IP Court dismissed the lawsuit on the same ground given by the MOEA.
According to the IP Court judgment, the mark in dispute consists of two parts of “ALL PAY” and “ALL 付寶 & device” from the top down with “ALL PAY” and “ALL 付寶” appearing to be the main part at the sight of the mark, and the two main parts are similar to Alibaba’s 支付宝 Alipay.com & device and ALI PAY mark. Besides, the IP Court held that the combination of two Chinese characters, “付寶” does not form an inherent vocabulary nor carry the meaning of “payment” in Chinese language, and therefore, it has its inherent distinctiveness for being used in electronic commercial platform, online shopping, and online shopping search services. O’Pay’s argument is inadmissible that the combination of two Chinese characters “付寶” carries the meaning of payment and it is a general term with little distinctiveness for use on third-party payment platform.
The IP Court pointed out in the judgment that the mark in dispute is likely to cause consumers confusion because it is used in the products/services identical and similar to those of Alibaba’s marks and Alibaba’s marks are well-known trademarks. In view of the foregoing, the IP Court determined against O’Pay that MOEA’s decision is not erroneous. (March 2017)