Before filing a trademark application, it is crucial to conduct a comprehensive trademark search in order to reduce the risk of rejection based on a likelihood of confusion with prior marks. Under Article 30(1)(10) of the Taiwan Trademark Act, an application shall be refused if the mark is (i) identical or similar to a prior registered or earlier filed mark, (ii) designated for use on identical or similar goods or services, or (iii) likely to cause confusion among relevant consumers. Although these factors are clearly articulated in principle, their practical application remains difficult to define with precision and depends heavily on the specific facts and context of each case.

  A recent opposition filed by Amazon Technologies highlights how Taiwanese authorities and courts may differ in applying these standards. The case involved WanPay Digital Marketing Company, a Taiwanese third-party payment provider, which registered a double-checkmark device mark (disputed mark, see Fig. 1 ) under Class 9. The mark covered goods such as computer hardware and mobile application software. Amazon argued that the mark was confusingly similar to its earlier “Blue Talk Bubble – Alexa” mark (cited mark, see Fig. 2 ), also registered under Class 9 for software used in voice commands, speech recognition and digital assistants.

  The key dispute focused on whether the two marks and their respective goods were sufficiently similar enough to cause likelihood of confusion among consumers. After Amazon filed its opposition, the Taiwan Intellectual Property Office (TIPO) decided in Amazon’s favor, holding that the marks and designated goods were similar and that confusion was likely. WanPay appealed to the Ministry of Economic Affairs, which upheld the decision.

  Although both administrative authorities upheld the opposition, the Intellectual Property and Commercial Court (IPC Court) later ruled in favor of WanPay, holding that no likelihood of confusion existed. The Supreme Administrative Court disagreed and reversed the decision, remanding the case. On remand, the IPC Court ultimately sided with Amazon again and dismissed WanPay’s claims . This particular litigation history illustrates how the analysis of likelihood of confusion under Taiwan’s trademark law and practice may be nuanced and could lead to divergent outcomes at different levels of review.

  In the first instance, the IPC Court acknowledged that both marks featured a rounded dialogue bubble with a cut corner at the bottom. However, the court noted that the disputed mark included two checkmarks inside the bubble, while Amazon’s mark consisted of a simpler blue bubble with no internal design. Although the court agreed that the marks were structurally similar, it found the visual differences sufficient to reduce the overall similarity.

  As for the goods, both marks covered items under Class 9. The disputed mark was used for computer hardware and payment-related apps, while Amazon’s mark was designated for smart home and voice-recognition software. The court considered the goods functionally related, sharing overlapping uses and channels of trade, and found therefore a relatively high degree of similarity in this regard.

  To determine the likelihood of confusion, the court considered several additional factors. The IPC Court found both marks to be inherently distinctive and unrelated to the goods or services themselves, which heightened their source-identifying function. The court also considered the actual scope of business of the two parties. While WanPay used the disputed mark in online and third-party payment services, Amazon’s mark was used in connection with smart home technologies. Finding no strong evidence of bad faith or overlap in target markets—and given the limited recognition of Amazon’s Alexa-related products locally, since Alexa is not downloadable in Taiwan—the court concluded that confusion was unlikely.

  Dissatisfied with the first-instance judgement, Amazon appealed to the Supreme Administrative Court. The Supreme Administrative Court emphasized that the two marks shared highly similar visual structures, particularly in the dialogue bubble’s shape, proportions and cut-corner positioning. The court noted that the addition of the internal checkmarks and color differences in the disputed mark did little to mitigate this similarity, especially since checkmarks are commonly associated with confirmation or approval and are unlikely to function as strong distinguishing features. Given that the disputed mark essentially “incorporated” the entire appearance of the cited mark, the court reasoned that relevant consumers could easily misconstrue the disputed mark as being part of Amazon’s brand series, possibly assuming an affiliation such as licensing, franchising or some related enterprise.

  In reviewing the relative familiarity of the marks, the Supreme Administrative Court stressed that more widely recognized marks deserve broader protection. Amazon presented multiple examples of media coverage, product guides and consumer comments as evidence of recognition (at least to some extent) of its Alexa-related mark in Taiwan. By contrast, WanPay merely submitted a single undated promotional image and a little-viewed YouTube video, which the court considered inadequate in terms of establishing any meaningful level of recognition. Therefore, the lower court’s conclusion that neither mark was familiar to the public was deemed inaccurate.

  In addition, the Supreme Administrative Court also found it likely that WanPay had prior knowledge of Amazon’s mark, citing several Taiwanese media reports about Amazon Alexa’s integration with financial services that predated the filing of the disputed mark. The court believed this increased the possibility that WanPay deliberately adopted a similar design to benefit from the recognition of Amazon’s branding. Given the significant resemblance between the marks and the overlap in digital application fields, the court found it hard to exclude the possibility of intentional imitation.

  Importantly, the Supreme Administrative Court focused on the commercial impression and the context in which consumers would encounter the marks, rather than relying solely on technical differences or the quantity of evidence submitted. The court reversed the lower court’s decision based on a more comprehensive and substantive assessment. On remand, the IPC Court followed the Supreme Court’s guidance and dismissed WanPay’s claims. WanPay’s subsequent appeal was ultimately rejected by the Supreme Administrative Court , the decision being finalized in Amazon’s favor.

  In conclusion, this case illustrates the complexity of the likelihood of confusion analysis under Taiwan’s trademark law. Rather than focusing solely on visual similarity, the courts evaluate multiple factors, such as distinctiveness, similarity of goods or services, market presence of the prior mark, and overall consumer impression. The divergent conclusions across different stages of review highlight the fact-specific and contextual nature of this assessment. For both trademark applicants and trademark holders, success in oppositions and trademark proceedings requires more than just legal arguments. It also depends on the presentation of clear, fact-specific evidence as well as anticipation of how that evidence may be weighed and interpreted by the IP authorities and courts.

Fig. 1 Taiwan Trademark Registration No. 02035098

Fig. 2 Taiwan Trademark Registration No. 01885349

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