The Cayman Islands Company Alibaba Group Holding Co., Ltd. (hereafter referred to as the "Alibaba Group") filed a trademark application "云 (Cloud) (stylized)" with the TIPO on July 15, 2011, specified for use with various goods/services . The TIPO deemed that the trademark pattern at issue was not sufficient for relevant consumers to recognize it as a trademark, and rejected the application on the ground of lack of distinctiveness. After failing its appeal, Alibaba filed an administrative litigation with the IP court.
The IP Court overruled the appeal judgment of the MOEA and the original decision of the TIPO, and remanded the case to the TIPO. The IP Court’s opinions are as follows:
- The Alibaba Group has filed two trademarks, both having the common pattern formed by a Chinese character "云" but slightly differing in their fonts. The character "云" is the simplified Chinese character from the traditional version "雲," both characters carry the same connotation of “cloud.” Since the previous filed trademark was already approved by the TIPO, the latter one formed by the same character "云" should also be deemed as having its distinctiveness. Under the administrative principle of Self-Binding, the TIPO should approve for the registration of the trademark application at issue that has the same Chinese character "云."
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- Since the connotations of the Chinese character "云(Cloud) " are irrelevant to the goods and services specified by the trademark at issue according to the Dictionary of Chinese Daily (《國語日報辭典》), the trademark at issue shall be of an arbitrary mark having distinctiveness.
- The trademark pattern at issue is designed as a calligraphy font with a round but uneven stroke. It can easily deliver a distinctive impression of a brand pattern to consumers, rather than being mistaken as a descriptive word for describing the quality, characteristics, etc. of the goods or services. Also, the Chinese character "云" is not a description potentially used by other bona fide peer competitors in ordinary transactions to represent the goods or services themselves or their quality, functionality or other characteristics. Therefore, it is obvious that the trademark pattern is sufficiently distinctive to differentiate goods or services provided by other trademarks.
- The trademark at issue does not merely designate for use with the goods under Class 9. However, the TIPO did not explain in detail what are the criterion to determine how goods and services under other classes, rather than those under Class 9, are directly and closely associated with "Cloud Computing," but considered all the goods and services specified for use of the trademark at issue as devoid of distinctiveness.
- Even though the single Chinese character "雲" has a meaning as the cloud in the sky, it will never lead to an impression of referring to "Cloud Computing Technology" at the sight when using the single character "雲" without any characters related to the network technology. Even if consumers instantly consider the character "云(Cloud) " as the simplified Chinese character "雲(Cloud) " at the first sight, it still need to be combined with other characters to be considered as referring to "Cloud Computing Technology." The TIPO’s interpretation of the trademark at issue "云" as referring to "Cloud Computing Technology" is inappropriate. Such a trademark shall still be a suggestive mark having the distinctiveness.
- Whether a mark has acquired distinctiveness shall be determined by the evidence of use generated from the domestic marketplace. All the news report data and contents of web sites shown by the Alibaba Group are those made by medias in mainland China about the “Ali Cloud” - none of them is the report about the practical use and operation of the trademark "云" in Taiwan. Therefore, the evidence of use from mainland China cannot be used as supporting evidence in this case.