2 November, 2017
TIPO Announced Intellectual Property Trend for the first half of 2017.
During the period from January 1 to June 30, 2017, a total of 35,566 (+3%) patent applications were filed with TIPO, of which 21,913 (+6%) applications were for invention patents, 3,959 (+0.4%) were for design patents, and 9,694 (-2%) were for utility model patents. In terms of applications by country, 8,086 (+9%) invention patent applications were filed by domestic applicants, and 13,827 (+5%) were filed by foreign applicants. The top 5 foreign application countries are: Japan (6,275), U.S.A. (3,244), South Korea (822), China (807), and Hong Kong (589). (Jill Kuo, Patent Department)
For the period from January 1 through June 30, 2017, the TIPO received 40,390 trademark applications, an increase of 6% compared to the same period last year. The number of applications by domestic applicants increased 8% to 30,028. There were 10,362 applications by foreign applicants, a decrease of 2%. In terms of the applicants’ nationality, China (mainland) ranked top with 2,082 applications, followed by Japan (1,841 applications), the U.S.A. (1,692 applications), Hong Kong (713 applications) and South Korea (668 applications). (Kevin Wei, Trademark Department)
TIPO announced statistics for the Accelerated Examination Program (AEP) during the period from January through August of 2017.
From January through August of 2017, 241 patent applications were made under the accelerated examination program (AEP), of which 118 were filed by domestic applicants and 123 were filed by foreign applicants. The top four foreign applicant nationalities were: Japan (54); U.S.A. (26); Germany (7) and Italy (6). (Jill Kuo, Patent Department)
TIPO announced the statistics of Patent Prosecution Highway (PPH) during the period from January through August of 2017.
From January through August 2017, 392 patent applications were made under the Taiwan-U.S. PPH. 341 applications were made under the Taiwan-Japan PPH. No application was made under the Taiwan-Spain PPH. 12 applications were made under the Taiwan-Korea PPH. (George Chen, Patent Department)
The official filing receipt and the photocopies of the relevant application documents of the purported prior patent application are not recognized as evidence for the priority claim.
On July 12, 2017, the Petition and Appeal Committee of the MOEA upheld the TIPO’s denial of the applicant’s priority claim on the ground that the official receipt and photocopies of the relevant application documents of the purported prior patent application were not sufficient evidence for the priority claim. The MOEA indicated that the evidence for the priority claim should be the original documents issued by the Patent Authority of a reciprocal country or a member of the WTO; and that such documents must contain the identity of the reciprocal country or member of the WTO where the prior application was filed, the filing date thereof and the application number to prove that the applicant had filed the first patent application with the reciprocal country or member of the WTO and to support its claim of the priority and the priority date. The MOEA stated that TIPO had correctly denied the applicant’s priority claim since the official receipt and photocopies of the relevant application documents which were not certified by the relevant patent authority could not be deemed as the priority documents. (Charles Ma, Patent Department)
The prior arts cited by the TIPO during the prosecution of patent applications can be used as the invalidation evidences, and TIPO may base upon such prior arts in rendering a different decision
The MOEA indicated in its appellate decision Chin-Su-Tze No. 10606307350 that the Patent Act provides a mechanism for patent invalidation by public for purpose of preventing error or omission by TIPO during examination of the patent application, and therefore TIPO may take a different position when reviewing the invalidation petition from the position it took during the examination of the patent application by virtue of the evidence and reasoning provided by the invalidation petitioner. Hence, according to the MOEA, TIPO did not violate the trust protection principle or the doctrine of estoppel in taking a different position in invalidation petition from its previous position when granting the patent application even though the prior arts cited in the invalidation petition were the same prior arts that overcame TIPO’s review during the examination of the patent application so long as TIPO lawfully rendered its invalidation decision based on the declaration and reasoning by the invalidation petitioner and the combinations of evidence in support of the invalidation. (Jimmy Wu, Patent Department)
The MOEA’s Petitions and Appeals Committee upheld the TIPO’s decision to revoke the registration of “SANDIABOSS” mark in Class 18 by reason of its similarity to the registered trademark “BOSS”
In an appellate decision, the Petitions and Appeals Committee (“PAC”) of Ministry of Economic Affairs upheld the TIPO’s decision to revoke the registration of the opposed trademark “SANDIABOSS” for use on the goods “wallets, purses, luggage, etc.” in Class 18. The opposition petition was instituted by Hugo Boss Trade Mark Management GmbH & Co. KG (a German company), citing the “BOSS” trademark, which was previously registered by the petitioner, against the mark “SANDIABOSS”, which was registered by the respondent Sandia Leather Goods Co., Ltd. (a local company). The TAC found the following: that although the opposed mark is composed of the English characters “SANDIABOSS”, the prefix “SANDIA” is the distinctive portion of the respondent’s company name; that the local consumers could, with their English capability, easily recognize the opposed mark “SANDIABOSS” to be a combination of two independent words “SANDIA” and “BOSS”; that the relevant consumers could easily and objectively make a connection between the opposed mark “SANDIABOSS” and the cited mark “BOSS” and thought they belong to same series of marks; that the make up of the two marks are similar and the degree of their similarity is not low; and that the cited mark “BOSS” has already been well-known through extensive use on the goods “wallets, traveling bags, etc.” for a long time. The TAC thus concluded that the relevant consumers could clearly be confused of the source identified by the opposed mark. (Sandy Yu, Trademark Department)
A request for reinstatement of patent application was denied due to an attributable delay of statutory time limit by the applicant where the patent biological depository institution requested a patent applicant to deposit an amount of biological materials that exceeds the regulatory requirement but the applicant failed to make an opposition comment thereto nor to make the requested deposit within the statutory time limit.
The IP Court held in its Judgement 106-Hsin-Chuan-Su-Tze No. 22, where the patent applicant had deposited 6 vials of biological materials and submitted the related application documents pursuant to the Regulations for the Deposit of Biological Material for Patent Application but the patent biological depository institution requested 25 vials of samples and asked the patent applicant to communicate with the institution if the applicant had difficulty to meet such depository request, that the patent application could not be reinstated pursuant to Article 17-II of the Patent Act since the applicant neither deposited the requested quantity of vials nor made any opposition to such request. The Court indicated that TIPO’s decision that the deposit was “deemed not to have been made” was not improper. (Jason Yang, Patent Department)
As the intervening party in administrative litigation, the patent invalidation petitioner may submit new evidences and argument in support of the invalidation or the subject matters raised during the invalidation proceeding.
The IP Court indicated in its Judgement 105-Hsing-Chua-Su-Tze No. 97 that although the invalidation petitioner merely appeared as an intervening party in the administrative litigation instituted by the patentee following a successful invalidation petition, the invalidation petitioner should be allowed to submit new evidence in further support of the invalidation; otherwise the invalidation petitioner must commence another invalidation petition, which could lead to another administrative litigation, over the same patent in the event the invalidation was overturned by the IP Court due to insufficient evidence. Having considered the legislative intent of Article 33 of the Intellectual Property Case Adjudication Act, which provides that “the Intellectual Property Court shall take into account any new evidence submitted by the party on the same grounds for the cancellation or revocation prior to the end of the oral argument”, the IP Court held that the term “party” in said Article should not exclude the patent invalidation petitioner who appeared in the litigation as an intervening party. The IP Court held further that when the invalidation petition was granted by TIPO upon some but not all of the grounds asserted by the petitioner, the intervening petitioner in the ensuing litigation could contest and re-argue those assertions which were previously rejected by TIPO and submit new evidence in support thereof. By allowing the intervening patent invalidation petitioner to submit new evidence and make argument, the Court indicated, multiple invalidation petitions and/or administrative relief over the same patent would be avoided and the interest of litigation economy better served. (Eddie Shih, Patent Department)
The IP Court held that Xuankong Temple and others had infringed on the copyright of Ju Ming and should be liable for damages in the amount of NT$ 48 million.
The IP Court held in a civil judgment on July 11, 2017 that the defendants Xuankong Temple and others knowingly sold counterfeit sculptures and displayed and possessed them with intent of distribution to earn exorbitant gains, and that such acts infringed on the copyright of Ju Ming. The Court found that the defendants also removed Ju Ming’s inscription on some of the sculptures, and held that such acts infringed on the moral rights of Ju Ming. The Court further held that the alleged NT$ 50 million profit by Xuankong Temple, et al., from selling the counterfeit sculptures was not supported by evidence, but awarded monetary damages of NT$ 5 million for copyright infringement per each piece of counterfeit sold NT$ 1 million per piece for display and possession, and NT$ 1 million per piece for removing Ju Ming’s inscription based upon Article 88 of the Copyright Act. The IP Court ordered that the defendants be jointly and severally liable to Ju Ming in the sum of NT$ 48 million, that they cease and desist infringing activities, and that the text of the judgment and the excerpt of facts be published on local newspapers. The defendants could still appeal against the judgment. (Yen-ling Liu)
The Supreme Administrative Court held that “M.Queen” in “
” mark is similar to “McQUEEN” in “ALEXANDER McQUEEN” mark.
The Supreme Administrative Court held in a judgement dated June 22, 2017 that the spelling, pronunciation and concept of “M.Queen” in the opposed mark “ ” are similar to “McQUEEN”
in the registered mark “ALEXANDER McQUEEN”, and that the goods designated by both marks are similar as well. The Court held that the mark “ALEXANDER McQUEEN” was filed and registered prior to the opposed mark and had been well-known among the relevant consumers before the registration of the opposed mark.
The Court denied the appeal and held that the IP Court’s judgment which upheld the TIPO’s decision revoking the registration of the opposed mark did not violate the Trademark Act, and that the appeal was without merits. (Alina Chai, Trademark Department)
For further information, please contact:
Joyce I. Ho, Partner, Tsar & Tsai Law Firm
joyeho@tsartsai.com.tw
