Amazon Alexa Trademark: Supreme Administrative Court Overturned IP Court’s Ruling on “Likelihood of Confusion”
Date: 19 March 2025
【Volume 150】
The Taiwan Intellectual Property Court recently overturned a decision made by the Taiwan Intellectual Property Office (“IPO”) and the Ministry of Economic Affairs in a trademark opposition case involving the Amazon Alexa trademark. However, after the case was appealed to the Supreme Administrative Court, the decision was immediately revoked by the Supreme Administrative Court. The court's opinions in this case regarding the determination of trademark similarity, the proof of use, the popularity, and other relevant factors of the trademarks are all noteworthy.
Case Fact
Amazon.com, Inc., the world's largest e-tailer and a well-known American multinational e-commerce company, spans e-commerce platforms, cloud computing, streaming media, and artificial intelligence. In 2014, Amazon launched its first intelligent voice assistant "Amazon Alexa" and adopted a graphic of a blue speech bubble as its trademark. Thereafter, on December 1, 2017, AMAZON TECHNOLOGIES, INC. (the opponent, “Amazon Technologies”), Amazon’s subsidiary dedicated in technology research and development, was granted the registration of the logo trademark in Taiwan ("Amazon Alexa Trademark").
On January 16, 2020, a Taiwanese e-commerce company, WanPay Digital Marketing Co., Ltd. (the plaintiff, "WanPay"), was granted registration for its trademark, an image of two checkmarks inside a circle ("the contested trademark"). Shortly after, Amazon Technologies claimed that the contested trademark was similar to the Amazon Alexa trademark and filed an opposition with the Taiwan Intellectual Property Office. The opposition was upheld.
WanPay disagreed with the decision to cancel its trademark following the opposition and thus filed an appeal with the Ministry of Economic Affairs. However, the Ministry of Economic Affairs still dismissed the appeal. WanPay then filed an administrative litigation with the Intellectual Property and Commercial Court (“IP Court”). In the first instance, the IP Court overturned the decisions made by the IPO and the Appeals Committee of Ministry of Economic Affairs, considering that the two trademarks were not similar. Accordingly, the IP Court issued a judgment to revoke the original decision (IP Court 2022 XingShangSuZhi No. 28 Judgement).
However, after Amazon Technologies appealed to the Supreme Administrative Court, the case was reversed and remanded (Supreme Administrative Court, 2023 ShangZhi No. 21 Judgement). Following the retrial by the IP Court, the court finally dismissed WanPay's claims, ruling in favor of Amazon Technologies (IP Court 2024 XingShangGengYiZhi No. 1 Judgement).
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Amazon Alexa Trademark |
The Contested Trademark |
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Trademark Specimen |
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Trademark Holder |
AMAZON TECHNOLOGIES, INC. |
WanPay Digital Marketing Co., Ltd. |
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Registration No. |
01885349 |
02035098 |
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Registration Date |
December 1, 2017 |
January 16, 2020 |
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Designated Goods |
Class 9: |
Class 9: |
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IPO’s decision |
The IPO affirmed the claims of Amazon Technologies, and upheld the opposition. |
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The first-instance decision |
The original decision was revoked. |
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Appellate court’s decision |
The first-instance decision was annulled. |
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Remanded decision |
The litigation filed by WanPay was dismissed. |
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IP Court’s Opinions on the decision (First Instance)1:
The court of the first instance overturned the decision of the IPO and the Appeals Committee, considering that the two trademarks do not constitute similarity, and issued a judgment to revoke the original decision. Its reasoning is as follows:
Through the presence or absence of two checkmarks inside the marks and the differences in color design, the Amazon Alexa trademark and the contested trademark create different visual impressions, making it possible to distinguish between the two marks, thus their similarity is low. Furthermore, neither of the two trademarks is well-known among relevant businesses or consumers in Taiwan; therefore, it is unlikely that there would be confusion between the two trademarks among relevant customers.
Amazon Technologies claims that its branded product “Alexa” has been integrated into financial payment services across different sectors. As WanPay's core business is electronic payments and finance, they must be aware of the Amazon Alexa trademark. However, given the lack of concrete evidence regarding Amazon Technologies’ use of the trademark in financial payment services in Taiwan, it is insufficient to conclude that WanPay has imitated the Amazon Alexa trademark.
Supreme Administrative Court’s Opinions on the Decision (Appellate Decision)2:
However, the Supreme Administrative Court revoked the IPO’s decision and remanded the case for reconsideration. The court's reasoning is as follows:
(1) The contested trademark fully incorporates the Amazon Alexa trademark, and the degree of similarity should be reconsidered
When comparing the two trademarks, the contested trademark is totally identical to the Amazon Alexa trademark in terms of the curvature, thickness, and position of the notched corners of the speech bubble, with only the color and the presence of two checkmarks inside the frame differing. Moreover, the checkmark symbol typically indicates verification or confirmation, and the function of being identified by the color difference is also limited. The original decision’s conclusion that the two trademarks give consumers different impressions and have a low degree of similarity should be reconsidered.
(2) The evidence of use and the popularity of both trademarks were not thoroughly considered in the original decision
In determining whether there is a likelihood of confusion between trademarks, “the degree of familiarity of relevant consumers with each trademark” is one of the factors to be considered. The trademark with which consumers are more familiar should be granted greater protection.
Based on the evidence provided by Amazon Technologies, it could be confirmed that the Amazon Alexa trademark not only serves as the logo for the intelligent voice assistant "Amazon Alexa", but also as the trademark used for the mobile application "Amazon Alexa." Additionally, Amazon Technologies submitted multiple reports and materials from Taiwanese media, all of which covered Amazon Alexa products and consumer reviews in Taiwan. In contrast, the evidence of use presented by WanPay merely consists of a single piece of promotional material written in Chinese without a date, and a YouTube video with only 48 views.
The original decision improperly concluded that both trademarks were not well-known by relevant businesses or consumers, solely based on most news reports about the Amazon Alexa trademark focused on overseas sales.
(3) The original decision did not thoroughly investigate whether WanPay had any intention of causing confusion among relevant consumers regarding the source of the two trademarks
The lower court has already determined that the primary business scope of WanPay includes electronic payments, software development, financial services, and other related services. Furthermore, Amazon Technologies has also presented evidence that before the application date of the contested trademark, there had been news reports and promotional activities regarding the integration of Amazon Alexa products with financial services. Although such services had not been available in Taiwan; objectively, it is possible that WanPay was aware of the use of Amazon Alexa products for financial payments.
The contested trademark fully incorporates the Amazon Alexa trademark and is designated for goods that are highly similar, such as computer software; however, the contested trademark is actually used for financial payment services. Therefore, whether WanPay has attempted to cause confusion among relevant consumers regarding the origin of the services should be further investigated.
IP Court’s Opinions on the Decision (Remanded Decision)3:
After the case was remanded to the IP Court, the IP Court adopted the views of the Supreme Administrative Court. It determined that the Amazon Alexa trademark and the contested trademark shared a high degree of similarity. Furthermore, since the Amazon Alexa trademark was clearly more familiar to relevant consumers, it should be given greater protection. Besides, since Amazon Technologies is relatively more familiar to the relevant consumers, there objectively exists a likelihood of confusion among those consumers. Ultimately, the court dismissed WanPay's claims and ruled in favor of Amazon Technologies.
Wisdom Analysis and Suggested Strategies
Whether there is a “likelihood of confusion” between two trademarks depends on the relevant trademark laws and examination practices of each country. It may involve a subjective determination or rely solely on a strictly literal comparison. In Taiwan, the Intellectual Property Office has established the “Guidelines for the Examination of Likelihood of Confusion”, which lists several factors for consideration and provides detailed explanations. In practice, these guidelines also serve as the standard reference for determining whether a likelihood of confusion exists among relevant consumers.
In the revised October 2021 version of the “Guidelines for the Examination of Likelihood of Confusion”, several new examination standards were added, including Section 5.2.6.11, which states: “If a part of a trademark is identical to another person's entire trademark or contains the main identifiable part of another person's trademark (…) it may be considered to have a high degree of similarity”. In the Amazon case, the Supreme Administrative Court cited this examination standard when comparing the similarity between the Amazon Alexa trademark and the contested trademark, noting that, since the contested trademark fully incorporated the design of the Amazon Alexa trademark, there was doubt about the original decision's determination of the degree of similarity between the two trademarks.
In addition, the “degree of familiarity of relevant consumers with each trademark” is one of the factors listed in the “Guidelines for the Examination of Likelihood of Confusion”. If relevant consumers are only familiar with one of the trademarks, greater protection will be considered for the more familiar trademark when determining the likelihood of confusion between the two. However, the relevant standards for determination depend on the extent to which the trademark is used with the designated goods or services, and evidence of use must be provided by the party making such claim. Since the consumers of a multinational company's products are often spread worldwide, the company shall particularly keep track of the use of the trademark and evidence in Taiwan.
Take the Supreme Administrative Court’s opinions as an example, reports from Taiwanese media that Amazon Technologies provided were also one of the key factors in influencing the outcome of the litigation. The court of first instance considered that the media reports referred only to the use of “Amazon Alexa” products overseas. However, the Supreme Administrative Court corrected this statement. It clarified that each media report included coverage of the product and trademark, and showed that the product had been marketed in Taiwan. Additionally, the reports also contained reviews and discussions on product usage by consumers in Taiwan. Thus, the Supreme Administrative Court further pointed out that the court of first instance should have more thoroughly examined the degree of familiarity among relevant consumers. Ultimately, in the second instance, the IP Court also concluded that the Amazon Alexa trademark was more familiar to consumers in Taiwan and should be afforded greater protection.
Accordingly, while the degree of familiarity among relevant consumers with a trademark is not an absolute factor in determining whether there is a likelihood of confusion, it remains advantageous for the more familiar trademark in trademark disputes. As a result, aside from asserting the international recognition of their trademarks, multinational business owners are highly suggested to pay close attention to the use of the trademark in Taiwan and the evidence of such use. This includes Traditional Chinese-language websites or applications targeting users in Taiwan, Taiwanese media reports and newspapers, consumer discussions on Taiwanese online forums, transaction receipts for sales made to consumers in Taiwan, and so on.
[1] The Intellectual Property and Commercial Court, 2022 XingShangSuZhi No. 28 Judgement.
[2] The Supreme Administrative Court, 2023 ShangZhi No. 21 Judgement.
[3] The Intellectual Property and Commercial Court, 2024 XingShangGengYiZhi No. 1 Judgement.
