Alibaba Victorious in Trademark Lawsuit.

Alibaba Group Holding Limited (Alibaba) filed an application for registering its stylized word mark “” but the application was denied by the Taiwan IPO, for which Alibaba filed an administrative appeal with the Ministry of Economic Affairs but the appeal ended up in failure.  Alibaba therefore brought this matter to the Taiwan IP Court and finally obtained a favorable judgment against Taiwan IPO.  [Taiwan IP Court’s administrative judgment under docket (101) Xing-Shang-Su No. 178 (20130327)] 

The Taiwan IP Court decided in favor of Alibaba on the following reasoning.  The Chinese character “云” of the “” mark (hereinafter the “subject mark”) is represented not by a simple common word but is stylized and put into a graphic design, so that the consumers would easily think of it as a brand logo instead of a descriptive word referring to the quality and feature of the products under the subject mark.  As to the dictionary meanings of the Chinese character “云” of the subject mark before being adopted in a trademark, it refers to “saying” when used as a verb and “if” or “etc.” as an auxiliary verb.  Those meanings are unrelated to the products and services under the subject mark and the Chinese character does not describe the designated products and services themselves nor their quality, function, or other characteristics.  In a word, the subject mark does not convey any information related to its designated products or services.  Alibaba’s “” mark constitutes an arbitrary mark that has distinctiveness.    Moreover, the Chinese character “云” is the ancient and simplified form of the Chinese character “雲” and the latter alone for general consumers means “cloud” in Chinese.  The Chinese character “雲” alone (meaning “cloud”) does not automatically refer to the Chinese term “雲端科技”(meaning “cloud computing technology”), if it is not combined with any other words related to the Internet or technologies.  Therefore, the Taiwan IPO contravened the laws by deciding that the subject mark should be held unregistrable for being in lack of distinctiveness. 

According to the Taiwan IP Court’s administrative judgment, the Ministry of Economic Affairs’ appeal decision and the Taiwan IPO’s decision should be vacated and the Taiwan IPO should make a new decision on Alibaba’s application for the subject mark (filed on July 15, 2011) based on the Taiwan IP Court’s holding.  (2013.04)
/CCS