Taiwan - Recent IP Case Studies.

Legal News & Analysis - Asia Pacific - Taiwan - Intellectual Property

27 June, 2019

 

Amendments to the Guidelines on the Hearing System for Patent Invalidation Cases came into effect on April 2, 2019

TIPO amended the Guidelines on the Hearing System for Patent Invalidation Cases, which came to effect on April 2, 2019.  Key aspects of the amendments include:

 

  1. Deletion of the requirement that the adverse party’s consent must be obtained in order to hold an invalidation petition hearing.
  2. Adding a provision providing a party’s right to request recusal of the examiner within 10 days after receipt of the hearing notice if the party believes that the examiner meets any of the statutory recusal causes.
  3. Providing a guideline for TIPO to handle the hearing procedure in the event of a request for an adjournment, a non-public hearing, recusal of the examiner or termination of the hearing.
  4. Adding the restrictions of submitting supporting documents after receipt of the hearing notice except for supplemental information or statement.
  5. Adding a new provision that a party must satisfactorily explain the reason of his or her late attendance before being allowed to attend the hearing by the presiding person. (Tony Hsieh, Patent Department)

 

The Amendments to Article 87-1-8 and Article 93-4 of the Copyright Act became effective.

 

The Amendment to Articles 87 and 93 of the Copyright Act was passed by the Legislative Yuan, and was promulgated by the President’s Order on May 1, 2019 and became effective on May 3, 2019.  Vendor’s supplying of the set-top boxes and APPs which allow the viewers to access the audiovisual content broadcasted by infringing websites now constitutes copyright infringement and may be criminally penalized by up to 2-year imprisonment.

 

Three amended law prescribes the following three types of copyright infringement:

 

(1)    Placing the APPs that compile links to websites containing illicit audiovisual content on Google Play, Apple Store, or other platforms or websites for people to download.

(2)    Providing advice, assistance or pre-set path for public to download computer software application containing illicit audiovisual contents without directly providing such computer software applications.

(3)    Manufacturing, importing or selling facility or equipment which may link to the aforesaid computer software applications.

(Yen-ling Liu, Attorney-at-Law)

 

TIPO announced statistics for the Accelerated Examination Program (AEP) on Invention Patents from January through April of 2019

 

From January through April of 2019, there were 94 patent applications filed under AEP, of which 42 were filed by domestic applicants and 52 were by foreign applicants.  The top four foreign applicants by nationality were: Japan (23); U.S.A. (9); Germany (8) and Cayman Islands (3).

 

Among the applications, 54 were filed under Category 1 (i.e., the corresponding application has been approved by a foreign patent authority after substantive examination), and the first office action in those applications (including examination opinions and final decisions) was issued in an average of 42.1 days.  3 applications were filed under Category 2 (i.e., EPO, JPO or USPTO has issued an office action during substantive examination but has yet to approve the application’s foreign counterpart), and the first office action therein was issued in an average of 13 days.  33 applications were filed under Category 3 (i.e., the invention application is essential to commercial exploitation), and the first office action therein was issued in an average of 70.4 days.  4 application was filed under Category 4 (i.e., inventions are related to green technologies), and the first office action therein was issued in 93.6 days.  (Tony Hsieh, Patent Department)

 

TIPO announced the statistics of Patent Prosecution Highway (PPH) through April of 2019

 

Up to April of 2019, there were 2684 patent applications filed under the Taiwan-U.S. PPH (September 2011 to April 2019), 3249 applications filed under the Taiwan-Japan PPH (May 2012 to April 2019), 2 applications filed under the Taiwan-Spain PPH (October 2013 to April 2019), 70 applications filed under the Taiwan-Korea PPH (July 2015 to April 2019), and 2 applications filed under the Taiwan-Canada PPH (February 2018 to April 2019).  From January to April of 2019, the first office action was issued in the average time of 46.5 days.  (Tony Hsieh, Patent Department)

 

TIPO Published Patent Application Trend in Q1 2019

 

According to the statistics released by TIPO, 17,243 patent applications were filed in the first quarter of 2019, a decrease of 2% compared to the same period last year.  The total number of invention patent applications is almost the same as those of the same period last year (-1%), while the utility model patent applications (3,956 cases) decreased 8%.  The design patent applications (1,984 cases) increased 2%, a positive growth for 3 consecutive quarters.

 

As for the domestic applicants, the total number of the invention patent applications (4,067 cases) is almost the same as those of the same period of last year, and the utility model patent applications (3,689 cases) and the design patent applications (940 cases) decreased.  As for the foreign applicants, the invention patent applications (7,236 cases) and the utility model patent applications (267 cases) also decreased, but the design patent applications (1,044 cases) increased 18%.

 

The top three domestic patent applicants were AU Optronics (187 cases), TSMC (163 cases), and Acer Incorporated (96 cases).  The top foreign applicant was Alibaba Group (267 cases), which is an increase of 251% compared to the same period last year. (Tony Hsieh, Patent Department)

 

TIPO Published Trademark Application Statistics in Q1 2019

 

Compared to Q1 2018, the total number (19,475) of trademark applications in Q1 2019 decreased 4%.  There were 14,004 applications filed by domestic applicants, a decrease of 2% compared to Q1 of 2018;

 

5,471 applications were filed by foreign applicants, a decrease of 8%, a result of decrease of the number of applications by Japanese and the American applications.  Breaking down by nationality of foreign applicants, Mainland China ranked first with 1,331 applications, an increase of 15% compared to the same period last year, followed by Japan with 1,102 applications and the U.S. with 879 applications.  (Singing Hsieh, Trademark Department)

 

The Chinese characters「天皇」is not inherently registrable as a trademark for “rice” due to lack of distinctiveness

In an administrative appeal decision, the Ministry of Economic Affairs (MOEA) indicated that “Japanese Emperor rice” was known as “Yoshino No. 1 rice” originated from Ji’an Township of Hualien County.  The rice was uniquely used to pay tribute to the Japanese Emperor during the period of Japanese ruling of Taiwan.  Relevant information could be found via Google search of the key words “Japanese Emperor rice”, and on an article titled “Brands of rice – Japanese Emperor rice” published by the Council of Agriculture on December 18, 2007.  By virtue thereof, the MOEA found that the Chinese characters “天皇” (means “Japanese Emperor”) bears no inherent distinctiveness.  The evidences submitted by the Petitioner were also insufficient to prove that the term has acquired the distinctiveness through extensive use.  Therefore, MOEA ruled that  “天皇” was not registrable on rice products pursuant to Article 29-I-(1) of the Trademark Act.  The Petitioner further argued that in early1993, he obtained a registration for the same mark “天皇” under Reg. No. 608406, but said registration was not renewed due to a reason not attributable to him.  MOEA, however, ruled that since the previous registration had expired due to non-renewal, the new application for registration of the same mark filed by the Petitioner should be examined by TIPO anew pursuant to the Trademark Act and the applicable examination criteria, and that the Petitioner’s assertion that he should be entitled to have a continuation of the expired trademark right should be denied.  (Jay You, Trademark Department)

7-Eleven, Inc. successfully revoked the registration of the mark “” registered by Chu-fu Investment Corp. in Classes 3, 18, 21, 25 and 35 by citing the marks “” registered by 7-11 and “” used by President Chain Store Corp. on online shopping platform services.

Tsar & Tsai, assisted 7-Eleven, Inc. (“7-11”), to successfully revoke the registration of the mark “” (“the opposed mark”) registered by Chu-fu Investment Corp. (“Chu-fu”) in Classes 3, 18, 21, 25 and 35 by citing the marks “” registered by 7-11 and “” (“the cited mark”) used by President Chain Store Corp. (“PCSC”) on online shopping platform services in Taiwan.  The IP Court found that the opposed mark and the cited mark were comprised of the numeral “7” and the term “NET” and the degree of similarity between the two marks were extremely high.  Before the filing date of the opposed mark, the cited mark had already been well-known to the local relevant enterprises and consumers in the fields of online shopping services and retail of diversified products and had been a highly well-known trademark in Taiwan.  The IP Court found that the goods and services designated under the opposed mark in Classes 3, 18, 21, 25 and 35 were relevant to the online shopping services and the retail services of the products provided under the cited mark; and that the opposed mark would likely cause confusion to the relevant consumers as to the provider of goods/services provided under the opposed mark.  As such, the IP Court held that the registration of the opposed mark should be revoked based upon Article 30-I-(11) of the Trademark Act.  The Supreme Administrative Court upheld the IP Court’s decision. (Sandy Yu, Dr. Joyce Ho)

 

 

For further information, please contact:  

 

 Jennifer Lin, Partner, Tsar & Tsai Law Firm

jenniferLin@TsarTsai.com.tw